Zusammenfassung von EPC2000 Art 112(1)(a) für die Entscheidung T0116/18 vom 28.07.2023

See also abstracts under Article 56 EPC and Article 13(2) RPBA 2020. In T 116/18 (of 28 July 2023) the board made some introductory remarks on the question of what impact the referring decision had on the subsequent appeal proceedings, i.e. the appeal proceedings after G 2/21 had been issued. This question emerged in the second oral proceedings since it was contentious between the parties whether a certain issue had actually been decided upon by the board in the referring decision and, if so, whether it could be re-opened in the second oral proceedings. The board recalled that the EPC does not mention anything with regard to this issue. Art. 111(2) EPC provides that if a board of appeal remits a case to the department of the EPO whose decision was appealed, that department is bound by the ratio decidendi of the board of appeal, in so far as the facts are the same. The board noted that Art. 111(2) EPC, however, was not applicable to the relationship between an earlier interlocutory decision of a board and the subsequent proceedings before the same board. In the absence of any provision, two opposing positions seemed possible in the abstract. According to the board, the first option was that the referring decision together with its legal and factual assessments had no binding effect on the subsequent proceedings before the same board after the case came back from the Enlarged Board. In this case, the board would be free to re-examine the points already raised in the referring decision, and it would therefore be free to depart from the factual and legal assessments underlying the referring decision. The second option was to consider that the referring board was bound by the referring decision's finding when the case came back from the Enlarged Board. In this approach, the scope of the subsequent proceedings would therefore be limited to the application of the Enlarged Board's decision to the unresolved issue that gave rise to the referral and to any other issues not dealt with in that decision. The present board decided to follow the second position for the following reasons. If, in the absence of an express legal provision providing for a binding effect the board were free to re-examine and redetermine all the factual and legal issues that had been subject of the referring decision, this would lead to a conflict with the requirements for referrals set out in Art. 112 EPC as interpreted by the case law. Art. 112(1)(a) EPC was interpreted to mean that "the referred question does not have a merely theoretical significance for the original proceedings ... as would be the case if the referring board were to reach the same decision on the basis of the file regardless of the answer to the referred question" (G 3/98). Where several grounds for opposition had been raised by the opponent(s), the referral was admissible only when the board had concluded that the patent would be maintained despite the other invoked grounds for opposition which were not the subject of the referral. If the board were to deny any binding effect of the referring decision and reopen the issues on which the board reached its conclusion in that decision, this would be in logical conflict with the requirements formulated for the admissibility of the referral. Indeed, it could lead to a situation in which the board departs from the assessment made in the referring decision and render the Enlarged Board's answer to the referred question ex post irrelevant, or, conversely, it could require a different referral from that originally made. To the present board it therefore seemed consistent with this framework to regard as binding the assessments which had led the board to consider a referral both admissible and necessary. According to the board, this conclusion seems to be consistent, mutatis mutandis, with some decisions which consider themselves bound by their own first decision if a second appeal on the same subject-matter is brought before them, on the grounds that decisions by the boards of appeal are final and without any possibility to appeal, meaning that no EPO body, not even the boards of appeal, can take a new decision on facts which have already been decided. The board concluded that as a consequence of this binding effect, the scope of the present proceedings was limited to applying the legal principle, as stated by the Enlarged Board, to the issues left unresolved in the referring decision. In accordance with this, the reasoning was divided into two main parts: the first deals in abstracto with the interpretation of Order no. 2 given in G 2/21, and the second deals with the application of this Order, as interpreted by the present board, i.e. the issues left unresolved in the referring decision.