7.7.2 Department of first instance bound by decision of board of appeal

Under Art. 111(2) EPC the EPO department of first instance is bound by the ratio decidendi of the board of appeal if the case is remitted to the department whose decision was appealed. Thus, when after remittal the proprietor files new requests which require examination to be re-opened on issues that have already been judged upon by the board of appeal, without the justification that might be provided, for example, by the proprietor's being faced with a new situation, then such requests should be deemed inadmissible (T 383/11).

For the avoidance of doubt, the board in T 366/92 pointed out that according to Art. 111(2) EPC 1973 the examining division was bound by the board's decision only to the extent that it had been decided that the subject-matter of Claim 1 was novel when compared with the prior art known from D2 and that the claim met the requirements of Art. 84 and 123(2) EPC 1973. See also T 255/92.

According to T 934/91 (OJ 1994, 184), boards of appeal have the power to apportion and also to fix costs: Art. 104(1) and (2) and 111(1) EPC 1973, having due regard to Art. 113(1) EPC 1973. Such a decision constituted an absolute bar to the opposition division's considering afresh, let alone deciding upon, either the fact or the quantum of the apportionment, or their reviewing the reasons (ratio decidendi) for which the apportionment had been made. The board found that the purported decision of the opposition division on this point was in law a mere communication of the clear and immutable legal position brought about by the earlier decision of a final court of competent jurisdiction, namely, the technical board of appeal.

However, a board of appeal decision has the binding effect referred to in Art. 111(2) EPC only if the case is remitted to the department of first instance. A board of appeal decision in another case is not binding on the department of first instance (see T 288/92; and also J 27/94, OJ 1995, 831).

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