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T 0051/08: Res iudicata and divisionals

Art. 111(2) first sentence reads:
If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.

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" (see Black's Law Dictionary, 5th Edition). 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, OJ EPO 1994, 184, point 3 of the reasons). 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.

In T167/93 (headnote) the Board of Appeal said that a decision of a Board of Appeal on appeal from an Examining Division has no binding effect in subsequent opposition proceedings or on appeal therefrom, having regard both to the EPC and 'res iudicata' principle(s).

This decision is silent with respect to the situation where an applicant files a divisional and wants to pursue subject matter in this divisional application whereas a decision in appeal has already been taken for the same subject matter in the parent application.

Such a situation was subject of decision T 51/08. The Board reasons (r 3.1) that a 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 relitigation of the same subject matter by the same parties, it must inevitably apply to a divisional application.

and in r 3.3:

[..]while it is true that Article 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.

The Board thus come to the conclusion as nicely summarised in the catchword :

Subject matter on which a final decision has been taken by a board of appeal in the parent application becomes res iudicata and cannot be pursued in the divisional application.

In addition the Board concludes in the same catchword that :

If the statement setting out the grounds of appeal in a case does not go beyond submitting and arguing for a set of claims which constitutes such subject matter, the appeal is not sufficiently substantiated.

My feeling is that some day this case may be part of a D1 question....

Read the decision here.

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