EP 2 508 830 B1 relates to a vertical heat exchanger configuration for liquid natural gas facility. The patent stems from a divisional application of EP 1 812 767.
Brief outline of the case
First decision
In a first decision, T 2371/18, claim 1 as granted as well of AR I and of AR II “old” offended Art 76(1).
AR II ”new”, filed during OP was not admitted under Art 13(1) RPBA. AR III-V were neither discussed, since AR I was found allowable by the OD. The case was thus remitted to the OD for further prosecution.
The present decision
Following remittal, the OD decided maintenance according to AR1 and the opponent appealed.
AR 1 corresponds in substance to the former AR II “new”, previously not admitted by the board.
The board confirmed maintenance according to AR1.
The opponent’s point of view
Once the board had decided in the earlier decision on the non-admittance of AR II “new”, this became res judicata, and the matter could not be reconsidered again.
The OD was therefore bound by the earlier decision under Art 111(2) and was not entitled to admit this request into the proceedings.
It would be against the principle of procedural economy and the purpose of appeal proceedings if decisions on admittance of requests were not binding on the OD after remittal, since the discussions would not move forward but start again from a point which had already been overcome in the preceding appeal proceedings.
The proprietor’s point of view
The concept of res judicata was limited to what a board decided under the reasons provided, i.e. only for what concerns the allowability of a request, and did not apply to considerations purely related to admittance.
T 2371/18 did not adopt any decision on ARt II “new” besides not admitting it. This did not constitute a decision on the substance of the request, and it only concerned the procedural framework of the appeal proceedings, not the possible subsequent opposition proceedings after the remittal.
The order given in the earlier decision was “for further prosecution” without any limitations. The OD was thus free to consider requests which had not been considered unallowable according to the reasoning of the earlier decision.
In any case, the facts within the meaning of Art 111(2) were not the same for substantial reasons and also because different rules for admittance applied in opposition and appeal proceedings.
The board’s decision
Purpose and binding effect of Art 111(2)
Considering the purpose of the binding effect of Art 111(2), it is clear that the examination after remittal should in principle not restart in an unlimited manner but needs to build on the framework set out in appeal.
The purpose of Art 111(2) to ensure brief proceedings and legal certainty requires considering the overall duration of the proceedings. The convergent approach underlying the appeal proceedings is not to be ignored after remittal.
Rather, “the prosecution of the case after remittal must in some way follow on the way from the situation that existed at the end of the appeal procedure, and that led to the remittal”.
The board did not share the opponent’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.
Contrary to the proprietor’s opinion, the binding effect of Art 111(2) with respect to a decision on admittance of a submission is not limited to decisions or conclusions of a board based on the examination of the substance of a party’s request.
Thus, a party’s submission, such as a request that was not admitted for procedural reasons in the appeal proceedings, in particular for being late filed, is inadmissible under Art 111(2) in post-remittal proceedings if the relevant facts for non-admittance remain the same.
The decision of a board not to admit a request for procedural reasons is covered by the principles set out for the binding effect in Art 111(2) even if the substance of the claimed subject-matter was not considered in the reasoning.
The effect of the res judicata is not limited to the order, but also includes the findings and conclusions that were decisive for the board’s decision on a specific request. Such final conclusions are not open to reconsideration even if new facts are adduced.
The “decision” of admittance or non-admittance is usually not reflected in the order and usually remains an intermediate step in reaching the final decision.
Application to the present case
In the opposition proceedings subsequent to remittal, the procedural and factual circumstances within the meaning of Art 111(2) changed in so far as the OD issued a preliminary opinion in which it presented a new objection under Art 123(2) against the then pending AR III which 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.
In the current case the raising of the new objection is not to be regarded as a mere argument irrelevant for the assessment of admittance. In line with the established case law, a new development in the proceedings, such as the raising of a new objection, can justify the admittance of a new request filed to overcome this objection, even at a very late stage of the appeal proceedings, and there is no reason to apply a stricter standard in proceedings before the opposition division post-remittal.
When exercising its discretion in post-remittal proceedings, the OD must take into account the framework defined in the appeal proceedings that led to the remittal to ensure the legitimate interests of the other party and the general public in having some degree of legal certainty about the existence and scope of the European patent within a reasonable time span.
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Key message
By virtue of Art 111(2), if a request was not admitted in appeal proceedings, this request is in principle not admissible by an OD after remittal. Remittal for “further prosecution” does not mean that all requests filed after remittal have to be admitted by the OD.
It would indeed run contrary to the convergent approach of the RPBA if the board would be faced after remittal and new appeal with a request not admitted before remittal.
Exception
If a new objection is raised against one of the remitted AR, the procedural and factual circumstances within the meaning of Art 111(2) change and the proprietor is allowed to file a request overcoming the new objection. In this circumstance, even a request not admitted by the board can be admitted by the OD.
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