May an Opposition Division re-admit a request that was not admitted by a Board of Appeal?

T 2194/22 was a second appeal to the outcome of opposition proceedings for patent EP 2508830 B1. During the first appeal an auxiliary request that was filed during oral proceedings was not admitted because of procedural expediency. The case was remitted and during the subsequent procedure the proprietor refiled the same request. The current Board had to decide whether this request should be admitted.

Background

During the first appeal (T 2371/18) the main request was found not allowable and two auxiliary requests were found to extend subject matter (Art. 76(1) EPC). An auxiliary request that was filed during oral proceedings named ‘AR II new’ was not admitted for procedural reasons. The case was remitted to the Opposition Division (OD) to discuss the still pending ARs III to V.

During the second part of the opposition proceedings the proprietor (P) filed a MR (AR III that was remitted) and filed AR 1 which was the same as ‘AR II new’ except for some minor formal amendments. The OD found this ‘AR II new’ admissible and allowable.

The opponent (O) appealed this decision. One of the issues the O brought forwards was that according to Art. 111(2) EPC the OD was bound to the decision of the previous Board to not admit ‘AR II new’. Art. 111(2) EPC reads:

“If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.”

For the Appeal P introduced the slightly modified version of ‘AR II new’ as MR.

The Appeal

In its decision the Board started by establishing that the subject matter of the MR of the appeal is the same as ‘AR II “new’ of the previous appeal. The Board found that literal identicality is not necessary for a previous decision to be binding.

Res judicata

The Board explored the understanding of res judicata since O brought forward that based on res judicata a previous decision is fixed, even when the facts have changed. Under the principle of res judicata, final decisions issued by the competent court are no longer open to appeal, and their final conclusions become binding. The Board pointed out that res judicata is a generally recognized principle in the contracting states pursuant to Art. 125 EPC and therefore applied for EPO decisions.

The Board furthermore explained that res judicata in appeal proceedings not only concern the final order for remittal of the case. Also the final finding and conclusions that are decisive for the decision on a specific request are binding according to res judicata.

The Board then compared the res judicata with the res decidendi of Art. 111(2) EPC. On one side res decidendi is more limiting as it only applies when the facts are the same for the same application. On the other hand, in comparison to res judicata the res decidendi also applies for matters of the underlying reasoning in the remittal decision.

The question was if the admittance of a request fell under res judicata. For this the Board pointed out that: “the "decision" of admittance or non-admittance is usually not reflected in the order and usually remains an intermediate step in reaching the final decision. Therefore, if the circumstances that were relevant for the decision change in the course of the proceedings, it seems appropriate that the "decision" of admittance remains open for reconsideration.”

Consequently,

the strict application of the principle of res judicata is not adequate for decisions on the non-admittance of the parties' submissions, such as a late-filed claim request, in as far as such decisions are intermediate conclusions based on a specific procedural situation.

Hence, for the current situation, the Board found that res judicata did not stand in the way of admitting the request.

Art. 112(2) EPC

The Board then considered Art. 111(2) EPC. According to the Board, the ‘new facts’ of this article should not be interpreted narrowly and encompassed new procedural developments. The question was if the previous Board's reasoning for non-admittance was still applicable. In this perspective the Board stated in reason 2.4.4:

“Whether this is the case depends on the particular reasoning in the Board's decision, e.g. whether it is of a mere procedural nature (as is frequently the case for non-admittance under Art. 13(2) RPBA) or whether it also takes into account the content of the claim request (for example, as regards prima facie allowability or its convergence with higher-ranking requests).”

The Board then pointed to that in the preliminary opinion of the second opposition proceedings a new Art.123(2) EPC objection was raised towards the MR, to which P responded by filing ‘AR II new’. This added matter objection was considered a new fact and therefore Art. 111(2) EPC was found not to stand in the way of admitting this request.