The present decision corresponds to the second appeal in this case. First the Opposition Division (OD) had revoked the patent on the ground of lack of novelty. The patent proprietor filed an appeal. In its decision T 785/05, the Board set aside this revocation and remitted the case to the OD, which maintained the patent in amended form. The opponent filed an appeal. A statement of the opponent made the Board consider whether novelty was still an issue:
[2] The question of lack of novelty, initially raised by the opponent and already decided in case T 785/05 was indirectly addressed again by reference to another case in the Opponent’s letter of 29 September 2008 […]. Hence, the Board has considered the question of whether the decision on novelty had become final (res judicata) or was again open to discussion.
[2.1] According to the EPC 1973, a decision which had become final and the reasons on which this decision had been based (ratio decidendi), were no longer open to discussion, nor could the Board in a further prosecution of the same case depart therefrom (cf. T 934/91 [2-3]; T 843/91 [6-6.3]; and also Case Law, chapters VII.D.10.1 and VII.D.10.2).
These findings were confirmed by the Enlarged Board of Appeal (EBA) in G 1/97 [2(a)], wherein, in its first paragraph, reference was made, first of all, to the suspensive effect of an appeal against a decision of a department of the EPO provided for by A 106(1) EPC 1973 and then to the consequences of this effect:
“This effect prevents a decision from becoming final and is therefore limited to ordinary appeals, i.e. those against decisions which are not yet final (…). Since, …, decisions of the boards of appeal become final as soon as they are issued, there can be no possibility of appeal under A 106 against these decisions. This is confirmed, moreover, by A 21 and A 106, which do not include the boards of appeal in the list - which must be regarded as exhaustive - of departments whose decisions are open to appeal” (emphasis added).
[2.1.1] The only further question, which could still arise in this respect, was of whether these findings would still be applicable under the revised version of the EPC 2000.
[2.1.2] As can most easily be seen in the OJ EPO, Special Edition 4/2007, “Synoptic presentation EPC 1973/2000 - Part I: The Articles”, the wording of A 21 and A 106, to which articles reference had been made in G 1/97, has not been amended to “include the boards of appeal in the list - which must be regarded as exhaustive - of departments whose decisions are open to appeal.” (cf. G 1/97, as quoted in [2.1], above).
[2.1.3] However, the question remains to be examined of whether the situation has changed by the introduction of the new A 112a “Petition for review by the EBA”.
[2.1.4] A first difference between appeal and petition lies evidently in the fact that, unlike A 106(1), A 112a(3) clearly excludes a suspensive effect of the petition.
[2.1.5] Moreover, a petition for review can, according to A 112a, only be based on fundamental procedural violations or defects during the appeal proceedings, which do not include questions relating to patentability as defined in Chapter I of Part II (A 52 to A 57) of the EPC. This can be derived from the, in the Board’s opinion, exhaustive list of fundamental procedural violations and defects in A 112a(2) and R 104 and R 105. This view has, in the meantime, been confirmed in G 3/08 [7.2.5].
[2.2] Consequently, this Board takes the view that the rulings and rationes decidendi in the above decisions, in particular in G 1/97, are still valid under the revised provisions of EPC 2000. In other words, the facts and findings dealt with in T 785/05 are not open to discussion in these appeal proceedings. Nor can arguments, which are contrary to the ratio decidendi or the result of decision T 785/05, be taken into account for the assessment of inventive step.
[2.3] Hence, the matter to be decided in this case concerns only the question of whether the subject-matter as claimed in any one of the [patent proprietor’s] requests is based on an inventive step and, if the main request and the first and second auxiliary requests failed, furthermore the question of whether the third auxiliary request contravened or complied with A 123(2) […].
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