T 0153/93 (Recording liquid/CANON) 21-02-1994

1. The appeal meets the formal requirements of Articles 106 to 108 EPC. Since the appeal does not lie against a decision of the Opposition Division made in response to a request made to it to set aside an earlier decision of a Board of Appeal, as was the case in T 934/91 referred to above, but is one issued pursuant to a remittal by the Board of Appeal, followed by a legally valid decision-making process as to the suitability of the amendments to the description, the appeal is admissible.

2. The Boards of Appeal are courts see G 1/86, OJ EPO 1987, 447, paragraph 14 of the Reasons, and their proceedings are judicial, see G 9 and G 10/91, OJ EPO 1993, pp. 408 and 420 respectively. Their decisions are final because neither Article 21 nor Article 106, nor any other provision of the EPC provides for any appeal from their decisions. Referrals to the Enlarged Board pursuant to Article 112 EPC are, of course, not appeals. Accordingly, decisions of Boards of Appeal are res judicata, that is to say "matters finally settled by a court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies" (see Black's Law Dictionary, fifth edition). Their judgments therefore constitute an absolute bar to any subsequent action involving the same matter or course of action as between the parties and their privies.

The previous finding of the Board of Appeal that Claims 1 to 5 as amended in the course of oral proceedings were novel, were clear and were inventive, are therefore res judicata. Furthermore, the findings of fact i.e. the clarity of the term "normal background lawn" as well as the construction of the disclosure of DE-A-2 924 861 in its entirety, are findings of fact that were part of that decision and are likewise binding upon the parties in all subsequent proceedings before the EPO, including its judicial arm, the Boards of Appeal, see, in particular, decision T 843/91 dated 5. August 1993 (to be published). In paragraph 3.4.2 of the Reasons of that decision, the Board of Appeal held that all findings of fact that were a conditio sine qua non of the finally binding parts (res judicata) of the decision, with the result that new facts, evidence or arguments seeking to cast doubt upon these facts could not be considered either by the Opposition Division or the Board of Appeal (self-binding effect). The Board went on to say that remittal proceedings should not afford opponents a much belated opportunity to attack the remitting decision by introducing new facts, as it was in the general interest of the public that legal disputes be terminated ("expedit republica ut sit finis litium"), and that individuals (and firms) had the right to be protected from the vexatious multiplication of suits.

3. In the present case the Opponent is not even seeking to challenge the Board's earlier decision to remit by the roundabout manner condemned in T 843/91 but is, instead, boldly seeking to re-open the twin issues of novelty and of clarity, relying on the same facts and arguments, with the sole exception of the argument concerning Example 6 of one of the prior publications, upon which the remitting Board's decision had been based. As has been explained above, the findings of clarity and of novelty are res judicata, and the findings of fact upon which this finding depends are binding both on the Opposition Division and this Board of Appeal. Furthermore, new but related facts and arguments e.g. the argument relating to Example 6 of the above- mentioned publication cannot, at this stage, be relied upon either to challenge those findings of fact, for the reasons set out in the previous paragraph.

4. The Board would also observe, obiter, that in its judgment it would not be open for an Opponent to rely upon totally new evidence or grounds of invalidity, either during remittal proceedings or on an appeal from them, in an attempt to challenge afresh the validity of claims already finally adjudged to be valid by a Board of Appeal, regardless of the relevance or cogency of such evidence or grounds. Any such further challenge by an Opponent and/or others to the validity of the patent may only be made in other jurisdictions i.e. in the national courts.

5. Accordingly, the appeal is dismissed.