7.7.4 Board of appeal bound in subsequent appeal proceedings following remittal

See also IV.E. 2.2.4 "Appeals against decisions of the boards of appeal".

The problem of being bound by an earlier board of appeal decision where a case is remitted also arises in connection with a subsequent appeal against the ensuing decision.

The boards of appeal take the view that a binding effect also exists in this case (see, for example, T 21/89, T 78/89, T 55/90, T 757/91, T 113/92, T 1063/92, T 153/93 and T 1545/08), often on the basis that board of appeal decisions are final and without appeal, so that no EPO body - not even boards of appeal - can take a new decision on facts which have already been decided. In T 690/91 the argument was that the same binding effect applied to any subsequent appeal proceedings since, according to Art. 111(1) EPC 1973, the board might exercise the same power as was within the competence of the department which was responsible for the decision appealed. Art. 111(1) EPC remains unchanged. The board found that a board was bound in the second of two successive ex parte appeal proceedings by the ratio decidendi of the decision in the first appeal proceedings where the facts remained the same. It was to be assumed that this was the case where there was no connection between a feature amended during the second proceedings and findings of the first board of appeal playing a key role in the decision.

See also T 720/93 for the extent to which a board considered itself bound by an earlier board of appeal decision in the same case. Although the claim pending before the board represented different facts from in the first proceedings since it was a different type of claim and contained a number of different features, the board found some findings of the first decision binding for the second proceedings.

The board in T 843/91 (OJ 1994, 818) pointed out that there were no provisions in the EPC 1973 allowing an appeal against a decision of a board of appeal. Decisions of the boards of appeal were final, as a decision can only be contested where it is expressly provided for under statute. When the first board of appeal delivered its decision, the content and text of the patent claims became res judicata and could no longer be amended in proceedings before the EPO (see also T 153/93). Under the EPC 2000, the Enlarged Board of Appeal has been given competence to decide on petitions for review under Art. 112a EPC, in order to make possible a limited judicial review. Thus decisions of the boards of appeal can now be contested, but only on limited grounds (see Chapter IV.E.9.2 "Petition for review").

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