Key points
- This is the second appeal in this opposition case. In T 0950/13, the Board remitted the case.
- " When justifying the remittal to the opposition division, the board drew attention to the fact that the decision then under appeal dealt solely with the grounds of added matter and lack of sufficiency of disclosure, but had not decided on other grounds for opposition such as inventive step (point 6). It remitted the case to the department of first instance for further prosecution (order)."
- Multiple parties intervene in the proceedings under Article 105 EPC.
- " All the interventions were filed after decision T 950/13 had been issued following an appeal by the patent proprietor against the decision of the opposition division dated 1 February 2013 revoking European patent no. 1 610 780. Decision T 950/13 remitted the present case to the opposition division for further prosecution of outstanding issues raised by the opposition filed on 21 January 2011. "
- " In their notices of intervention and on appeal, the appellants [itnerveners] argued that the medical use claimed in the main request was not sufficiently disclosed. They asked that this ground be reconsidered, and argued that the application did not disclose a plausible concept of treatment but a mere allegation without proof that dasatinib treats the same cancers as imatinib. "
- The Board does not admit these objections.
- The Board: " According to the established case law of the boards of appeal, res judicata is a generally accepted principle which means that a matter which has been judicially determined in a final manner between parties by a tribunal of competent jurisdiction cannot become the subject of subsequent proceedings between the same parties or their successors"
- "Hence a board's decision is an absolute bar to subsequent proceedings on the same matter between the same parties (or their successors). The order and the reasons for the decision determine the extent to which the decision is final (T 460/95, OJ EPO 1998, 587, point 2 of the Reasons). The "same matter" refers to all issues of fact and law which have been finally settled (T 694/01, OJ EPO 2003, 250, point 2.10 of the Reasons; T 167/93, OJ EPO 1997, 229, point 2.5 of the Reasons; see also T 843/91, OJ EPO 1994, 832, headnote and point 3.4.2 of the Reasons; T 153/93, point 2 of the Reasons; T 308/14, catchword and point 1.3)."
- In T694/01, the Board had remitted with an order specifying the claims. T167/93 r.2.5 states "any generally recognized principle of estoppel by rem judicatam for the Contracting States is of extremely narrow scope". For the decision cited as "see also", T 843/91 deals with a remittal specifying the claims in the order. T 153/93 however, indeed says that "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" but again the previous decision T761/90 had an order specifying the allowable claims.
- In T 308/14, the earlier appeal decision was indeed to remit for further prosecution, i.e. not with an order to maintain the patent with certain claims. However, in that decision, it was held that: 'This decision constituted res judicata and thus was binding on the opposition division in the subsequently resumed opposition proceedings (Article 111(2) EPC)." So in that decision, the binding effect under Article 111(2) EPC and res judicata were seen as one and the same.
- However, as held in T 0449/15, " The principle of res iudicata and that of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC 1973 are not mutually exclusive, but complement one another. "
- The Board then takes a deep dive and gives an interesting analysis of the concepts of res judicata and binding effect. Extensive internal citations are omitted in the following.
- " The principle of res judicata and that of the binding effect pursuant to Article 111(2) EPC are not identical, but complementary. The binding effect of the ratio decidendi pursuant to Article 111(2) EPC is limited to proceedings regarding the same application or patent following a remittal of the case after a (first) decision of a board of appeal. The department dealing with the case in the subsequently resumed proceedings and the board dealing with a possible second appeal arising from these proceedings are bound by the ratio decidendi of the first decision. This binding effect extends to matter which is not finally settled (res judicata), but encompassed by the ratio decidendi "
- " On the other hand, it only applies "in so far as the facts are the same" [] The principle of res judicata is not limited to a situation of remittal for further prosecution but also applies in such a situation. Matter which has become res judicata is not open for reconsideration following remittal. Since this principle applies to all issues of fact which have been finally settled, it precludes a change of facts as contemplated by Article 111(2) EPC [] New facts, evidence or arguments seeking to cast doubt upon settled issues of fact cannot be considered. "
- " The nature of opposition and opposition appeal proceedings therefore does not support the view that a matter finally settled by an appeal decision remitting the case to the opposition division for further prosecution only binds the parties to the appeal proceedings and does not prejudice an intervener that only becomes a party to the opposition proceedings subsequent to the remittal of the case. The result of applying the principle of res judicata depending on the party status in the appeal proceedings leading to remittal would be absurd. The adjudged matter had to be accepted by the initial parties, and the opposition division had no power to re-open such matter in respect of those parties, whereas interveners would be allowed to disregard the final findings of the decision remitting the case to the opposition division and start opposition proceedings anew. However, in opposition proceedings it is not possible to take separate decisions for different parties on the form of the patent to be maintained." It is also not possible to conceptually separate the opposition proceedings into two different parts, the first one being the original opposition and the second one opposition proceedings including the interveners. A European patent can only be the subject of one common opposition procedure []. The filing of oppositions by different opponents or interveners does not lead to separate opposition proceedings for each party, not even conceptually.
- " In view of the above, the board considered whether the object and purpose of Article 105(1) EPC might justify and constitute an exception to both the principle of res judicata and the binding effect under Article 111(2) EPC." The board therefore agrees with decision T 694/01 that there "is nothing in the EPC to suggest that the intervention of an assumed infringer opens a new stage of proceedings which invalidates binding results of the proceedings to date" (T 694/01 []).
- In T 694/01, the Board had in the first appeal decided on the wording of the claims and remitted for maintenance of the patent in amended form with a description to be adapted, and the interveners intervened only at that stage.
- " In the case at hand, the grounds of opposition of added matter and sufficiency of disclosure have been finally determined in decision T 950/13. These grounds are therefore not open to an intervention and can be considered neither by the opposition division nor by the board on appeal. As set out above, due to the principle of res judicata, it is not possible to change the facts underlying the decision T 950/13 even if this change is acceptable in view of the ratio decidendi."
- As a comment, the effect of this decision seems to be that each finding of fact and conclusion of the Board is res judicata, and hence binding, after a remittal, even if a party could successfully invoke the exception expressly foreseen by the legislator in Article 111 (2) EPC. In other words, does this line of case law on res iudicataa make the exception of Article 111 (2) EPC a dead letter?
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/09/t-068919-iii-intervention-and-res.html