10.5. Binding effect: remittal for the continuation of proceedings

Where a board of appeal issued a decision rejecting certain claimed subject-matter as not allowable and remitted the case for further prosecution in accordance with an auxiliary request, under Art. 111(2) EPC 1973, the examination for allowability of the rejected claimed subject-matter could not be re-opened, either by the examining division during its further prosecution of the case, or by the board of appeal in any subsequent appeal proceedings (T 79/89, OJ 1992, 283).

In the opposition proceedings following the remittal for continuation of the proceedings, an amendment of the patent claims could change the actual basis of an appeal decision. In such a case the binding effect of Art. 111(2) EPC 1973 no longer applied (T 27/94).

Art. 111(2) EPC 1973 stated unambiguously that the department of first instance and the board of appeal which was again concerned with the case were bound by the ratio decidendi of the remitting decision only "in so far as the facts are the same". The opposition division was thus not bound by the first decision if new claims were submitted which were not in conflict with the ratio decidendi of the decision (T 609/94).