Thursday, 7 January 2010

T 51/08 – Divisionals Can’t Revive Dead Claims

In the present case, the Examining Division (ED) rejected a divisional application for lack of inventive step. In its appeal, the applicant did not argue against that finding but filed a new set of claims. Claim 1 of this set corresponded to Claim 1 of an auxiliary request that had already been refused in a decision concerning the parent application.

The question to be decided is whether the statement setting out the grounds of appeal meets the requirements of A 108, third sentence. According to the established jurisprudence of the boards of appeal the statement of grounds should specify the legal and factual reasons on which the case for setting aside the decision is based. This is now also enshrined in R 99(2) . The arguments must be clearly and precisely presented to enable the board to understand immediately why the decision under appeal is alleged to be incorrect. In the present case, no reasons at all were given as to why the decision of the ED was wrong. [1]

Instead the appellant filed an amended set of claims. It is accepted in the jurisprudence that an appeal may be admissible if, despite its not being clear from the statement of grounds why the contested decision is incorrect, claims are put forward which overcome the objections of the department of first instance or remove the factual or legal basis for the rejection (T 729/90). The idea is that an appellant should not be forced to pursue claims which he accepts are not allowable or he is no longer interested in and where he is prepared to amend the application in order to meet the first instance objections. It would be pure formalism which serves neither the appellant nor the board of appeal if he were to be compelled to provide arguments relating to the decision under appeal before being entitled to submit amendments during the course of the appeal procedure. [2]

In the present case, the appellant has submitted a set of 18 claims which undisputedly corresponds, at least in its independent claims, to auxiliary request two of decision T 1180/04 concerning the parent application. In decision T 1180/04, the then competent board decided that independent claims 1 and 12 were not inventive and dismissed the appellant’s appeal.

In G 1/97 [2(a)] the Enlarged Board of Appeal (EBA) stated that decisions of the boards of appeal become final as soon as they are issued. This means that the board’s ruling becomes binding. This principle of res iudicata is generally accepted in the contracting states and acknowledged by the boards of appeal (see e.g. J 3/95 and T 167/93). The meaning of the legal term res iudicata is old and well-established: it defines “...a matter finally settled by a Court of competent jurisdiction, rendering that subject matter conclusive as to the rights of the parties and their privies”. Such a final judgement by a court of competent jurisdiction therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or privies (T 934/91 [3]). Once a final judgement has been handed down, subsequent judges who are confronted with a suit that is identical to or substantially the same as the earlier one and between the same parties, are prevented from deciding on it a second time. [3]

The appellant was of the opinion that the principle of res iudicata could not be applied in the case of a divisional application when a decision on the same subject matter had been taken by a board of appeal in the case of the parent application. The board cannot share this view since it is inherent in the principle of res iudicata that subsequent proceedings should be avoided. The res iudicata maxim is based on the need for an end to all litigation. It provides legal certainty, while taking account of the general public concern for the settlement of disputes (expedit rei publicae ut finis litium sit). It prohibits parties from challenging what has already been decided (J 3/95 [6]). It must be avoided that the same case is decided twice, possibly with a different outcome. The divisional application gives the applicant, within certain limits, the possibility to pursue the same subject matter as in the parent application. Since the aim of the res iudicata maxim is to avoid re-litigation of the same subject matter by the same parties, it must inevitably apply to a divisional application. [3.1]

[…] J 27/94 deals with a different situation. In [this decision] the board of appeal decided that the department of first instance is not bound by a decision of a board in which the board had decided on a specific legal problem, when the same legal problem arises in another case. Moreover, while it is true that A 111(2) EPC 1973 provides for the binding effect of a judgment only for the decided case, the general principle of res iudicata goes beyond this and aims at avoiding any subsequent ruling on the same subject matter in other proceedings between the same parties. [3.3]

It follows from the preceding that the set of claims submitted with the statement setting out the grounds of appeal has become res iudicata. Since the board cannot take a decision on this subject matter, it can not be pursued in the present application. [4]

The next question which needs to be answered is what consequence this has for the admissibility of the appeal. […] The appellant submitted that the question of whether the amendments overcome or are capable of overcoming the objections of the department of first instance concerns the allowability rather than the admissibility of the appeal. However, a substantive examination presupposes that the board is entitled to perform this examination. In the present case, the board is prevented from doing so for procedural reasons. The board does not even have a discretion it could use in the appellant’s favour. Therefore, the amendments could not from the outset remove the factual or legal basis for the rejection. [5]

[…] The statement of grounds is not just an intermediate step in the procedure, but sets the framework of the appeal within which the board will perform its substantive examination. Submitting amendments on which the board is prevented from deciding does not leave any room for such an examination. There is no case for the Board to examine. This is clearly in contradiction to the purpose of the requirement of giving grounds of appeal, which would degrade the statement of grounds to a purely formal act. [6]

The statement of grounds of appeal does not meet the requirements of A 108, third sentence and R 99(2). Therefore the appeal is to be rejected as inadmissible according to R 101(1). [10] 

NB: This decision has also been discussed here (in French).

To read the whole decision, click here.