The present decision deals with an appeal following the revocation of the patent by the Opposition Division. The patentee pointed out that inventive step had already been confirmed by decision T 891/98 and therefore had to be considered to be res judicata.
[…] Although the subject-matter of claim 1 of the contested patent is identical with the one that the board held as involving an inventive step in T 891/98, the documents and arguments on which the parties relied upon in opposition are different from those on which T 891/98 was based. The factual situation in opposition proceedings was thus different from that of the ex parte proceedings, and so the res judicata principle does not apply in the present appeal case.
In any case, a former decision of a board on an appeal from an examining division has no binding effect in subsequent opposition proceedings or an appeal therefrom (T 167/93 [2.5-2.7 and 2.11.3]), because the parties are not the same. [1]
The second paragraph is not a surprise; it only restates the established case law of the EPO according to which a decision of a Board of appeal following an appeal against a decision of the Examining Division cannot be considered res judicata in subsequent opposition appeal proceedings.
What is more intriguing here is the first paragraph cited above. The Board appears to consider that even if there had been a first decision on inventive step (e.g. in a first decision of the Board), it would not be res judicata in favour of inventive step if the documents and arguments used subsequently (e.g. in a second appeal during the same opposition proceedings) in order to establish a lack of inventive step were not the same. If this approach is followed by the Boards, it leaves almost no space for res judicata altogether.
What is more intriguing here is the first paragraph cited above. The Board appears to consider that even if there had been a first decision on inventive step (e.g. in a first decision of the Board), it would not be res judicata in favour of inventive step if the documents and arguments used subsequently (e.g. in a second appeal during the same opposition proceedings) in order to establish a lack of inventive step were not the same. If this approach is followed by the Boards, it leaves almost no space for res judicata altogether.
To read the whole decision, click here.
3 comments:
There is nothing new or surprising in this decision. Res Judicata applies when inter alia the parties are the same. This is obviously not the case in examination and opposition proceedings. Long ago the boards have found that appeal decisions in examination have no binding force in opposition proceedings, neither for the divisions nor for the boards.
See for example T 167/93, OJ 1997, 229
You are right. That is what I meant when I said that the second paragraph was not surprising. But I think the decision makes a statement that goes beyond this well-known fact. The first paragraph cited appears to say (at least that is my impression) that there could not be res judicata concerning inventive step whenever the documents and arguments are not the same. This argument would apply even in successive appeals within the very same opposition proceedings. This is why I found this decision noteworthy and why I would not agree that "there is nothing new or surprising in this decision."
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