2.4.3
Final decision on subject-matter in the parent application - res judicata 

In 51/08 the appellant had submitted with the statement of grounds of appeal amended claims corresponding to the second auxiliary request of the parent application which had already been refused on appeal. The board held that subject-matter on which a final decision had been taken by a board of appeal in the parent application became res judicata and could not be pursued in the divisional application (see also 790/10).

In 1643/10 the board left open the question of whether, or to what extent, decisions regarding a parent or a sibling application represent res judicata for a divisional application.

In 2084/11 the appellant (opponent) had argued that the invention's reproducibility was res judicata, a final decision having already been taken on the parent application. The board noted that the EPC did not mention res judicata, let alone regulate its applicability in the context of separate proceedings on parent and divisional applications or any resulting patents. EPO proceedings on a divisional were essentially independent of those on its parent (see 1254/06). The board therefore doubted that a final decision taken in opposition appeal proceedings (here revocation of the patent) could have any "cross-procedural" res judicata effect at all on separate opposition (or opposition appeal) proceedings concerning a patent granted on a divisional. 167/93 had already said that res judicata, whilst a generally recognised principle, was of extremely narrow scope and would only "involve something" where (amongst other criteria) "the issues of fact are the same". But it had said nothing about any "cross-procedural" application. In the case in point, the board anyway took the view that the above criterion from 167/93 was clearly not fulfilled, because the subject-matter (the "something" in the sense of 167/93) requiring the division's or board's decision was not the patent granted for the parent application; rather, it was the divisional-derived patent and whether the requests submitted were legally sustainable in view of the objections raised, and – in contrast to 51/08 – the requests (sets of claims) for decision in the two sets of proceedings were also not identical. Moreover, the underlying facts were different since futher evidence had been submitted. The board's conclusion was that an appeal decision on the parent patent could have no res judicata effect in opposition (or opposition appeal) proceedings as regards the reproducibility, and thus the validity, of the divisional-derived patent in suit.

In 1155/13 an objection of lack of sufficiency was raised by the appellant against the patent based on a divisional application. The board considered, however, that 468/09 had dealt with an insufficiency objection in relation to the patent granted on the basis of the parent application. Since decision 468/09 was res judicata and dealt with insufficiency of disclosure in relation to the same embodiments, and the facts were the same, the current board had no power to examine this objection again (with reference to 51/08).

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