10. Effet contraignant

In T 1285/23 the proceedings initially started with the Receiving Section's refusal to add GB as a designated state. In J 13/18 the Legal Board dismissed an appeal against that decision. It interpreted Art. 76(2) EPC and concluded that adding GB as a designated contracting state would contravene it, because GB had been withdrawn as a designated contracting state in the parent application at the time of filing the application at issue. The Legal Board also decided to admit neither the submissions under R. 139 EPC filed with the statement setting out the grounds of appeal nor the new submissions (made during the oral proceedings before it) based on the principle of good faith..

Before the examining division, the appellant then requested that the application be updated such that GB be included as a designated state, basing this on the principle of good faith, arguing that this reasoning had not been admitted by the Legal Board in J 13/18 and requesting that it now be admitted. In a communication the examining division not only gave a preliminary opinion on the request to add GB as a designated state under the principle of good faith, but also on a request for correction. The examining division explained that: "For the sake of completeness, and taking duly account of the decision of the Legal Board of Appeal not to admit the request under Rule 139 EPC (see point 2 of J 13/18), the Examining Division will also examine whether the requirements for a correction under Rule 139 EPC are met." In its subsequent submissions before the examining division the appellant based its request both on the principle of good faith and on the correction of an error. In the decision under appeal the examining division decided that neither the principle of good faith could be applied nor could the request for correction under R. 139 EPC be granted. The request to include GB as a validly designated state for the present application was thus refused..

In the present appeal, the board explained that by dismissing the appeal the Legal Board in J 13/18 had issued a conclusive decision on the request of the appellant to include GB as a validly designated state in the application, rather than admitting the late-filed lines of argument (including that of the principle of good faith) and remitting the case to the department of first instance for further prosecution.

The appellant argued that res judicata applied to the reasoning of a decision, rather than to its order. Given that its request was based on the principle of good faith and the Legal Board had not considered this line of argument in substance, it argued that decision J 13/18 had no effect of res judicata on its current request. As long as the proceedings were still pending, any new line of argument in support of the same request could be brought and be considered by the competent department provided it did not contradict the earlier decision.

The board disagreed and held that the effect of "res judicata" emanating from J 13/18 could not be limited by the board's reasoning on which the decision was based. If a party were allowed to pursue the request decided upon in that decision again, this time on the basis of new facts, it would open the possibility to render the legal effect of that decision null and void, a legal consequence specifically not foreseen for decision J 13/18, which cannot be appealed.

During the oral proceedings, the appellant relied on numerous passages of decision T 2194/22. The board distinguished T 2194/22 from the case in hand in two respects. First, T 2194/22 was not concerned with a case where the board had finally settled a request. The discussion in T 2194/22 concerned the binding effect, under Art. 111(2) EPC, of the first board of appeal decision T 2371/18 on the opposition division, and in particular whether a claim request, which had not been admitted by the competent board, could be considered in substance by the opposition division in subsequent proceedings. Secondly, the facts underlying the competent board's decision in T 2371/18 (the first appeal in the proceedings leading up to T 2194/22) for not admitting the claim request in question were not the same as the facts before the opposition division after remittal, because a new objection had been introduced in the post-remittal proceedings. In the case in hand, no such change in the factual situation had occurred.

In conclusion, the board held that the examining division was not competent to decide in substance on the appellant's request to add GB as a validly designated state in the application. The decision was void and formally to be set aside. By issuing a decision on a matter in respect of which it was not competent, the examining division had committed a substantial procedural violation.

In T 2194/22 the main request was identical to auxiliary request 1 filed on 11 February 2022, which was admitted and found to be allowable by the opposition division, and was in substance identical to auxiliary request II "new" filed during oral proceedings before the board on 28 April 2021 and not admitted in the board's earlier decision T 2371/18, even though auxiliary request 1 filed on 11 February 2022 contained minor formal amendments. In view of auxiliary request 1 and auxiliary request II "new" being substantively identical, it was necessary to assess whether the findings in the board's earlier decision T 2371/18 on auxiliary request II "new" were binding for the examination of the admissibility of auxiliary request 1.

The board did not share the appellant's view that a board's decision not to admit a request is in any case absolutely binding in post-remittal proceedings as res judicata even if the facts underlying the decision are not the same. The board noted that in the case law of the Boards, the binding effect following from the principle of res judicata is not always clearly distinguished from the binding effect of the ratio decidendi pursuant to Art. 111(2) EPC and the decisions are sometimes not consistent as to which principle applies in specific circumstances (see, for example, T 1545/08, points 11 and 12 of the Reasons compared to T 308/14, points 1.2 and 1.3 of the Reasons). The principle of res judicata implies that the conclusive decision on a specific request is an absolute bar for reconsideration. The binding effect of the ratio decidendi is on the one hand narrower as it is limited to proceedings on the same application or patent following a remittal of the case and as it only applies insofar as the facts are the same. However, on the other hand, it is broader insofar as it is related to matters not covered by the res judicata but encompassed by the underlying reasoning (ratio decidendi) in the remittal decision.

Against this background, the strict application of the principle of res judicata was not adequate for decisions on the non-admittance of the parties' submissions, such as a late-filed claim request, insofar as such decisions are intermediate conclusions based on a specific procedural situation. The board's "decision" not to admit auxiliary request II "new" filed on 28 April 2021 in the earlier appeal proceedings which was only based on procedural reasons was not an absolute bar for reconsideration of an identical or equivalent request in proceedings subsequent to remittal. The binding effect of the ratio decidendi as set out in Art. 111(2) EPC did apply to the board's earlier decision in T 2371/18 not to admit auxiliary request 1 filed on 11 February 2022 but only insofar as the relevant facts remained the same.

The reasoning (ratio decidendi) in the board's earlier decision T 2371/18 for not admitting auxiliary request II "new" merely related to the procedural situation at that stage of the proceedings. In the board's earlier decision, it was held that the proprietor had been made aware of the particular objection under Art. 123(2) EPC at an early stage, and therefore could and should have filed the new request already with its reply, whereas filing the request only in the oral proceedings before the board was detrimental to procedural economy.

However, in the opposition proceedings subsequent to remittal, the procedural and factual circumstances within the meaning of Art. 111(2) EPC indeed changed insofar as the opposition division issued a preliminary opinion in which it presented a new objection under Art. 123(2) EPC against the then pending auxiliary request III. This request had previously been filed on 28 November 2018 with the proprietor's statement of grounds of appeal in T 2371/18. Auxiliary request III filed on 28 November 2018 was not assessed in the board's decision T 2371/18 but formed the basis for the remittal. In pursuing this request when re-entering opposition proceedings, the proprietor did indeed follow on from the situation that existed at the end of the first appeal proceedings. The objections raised in the communication of the opposition division were not identical to the objections referred to in the board's earlier decision T 2371/18. Thus, in the case in hand, the facts with respect to admittance of auxiliary request 1 within the meaning of Art. 111(2) EPC were not the same in the post-remittal proceedings. Hence, the binding effect of Art. 111(2) EPC did not apply. Re-filed auxiliary request 1 was therefore not inadmissible for procedural reasons (Art. 111(2) EPC) such that its admittance was subject to the discretion of the opposition division.