If a department has to give a decision in a case which has already been remitted by the board of appeal for further prosecution to that department, it is bound by the ratio decidendi of the board of appeal, in so far as the facts, e.g. the subject-matter of the patent and the relevant state of the art, are the same.[Art. 111(2); ]
An opposition division is not bound by a decision of a board of appeal on appeal against a decision from an examining division (see T 167/93). The exclusive phrasing of the last sentence of Art. 111(2), only mentioning the examining division being bound by the decision on appeal against a decision of the Receiving Section, makes this clear. Opposition proceedings are entirely separate from the examination proceedings, and the opposition division is entitled to examine the facts, evidence and arguments anew, particularly since another party (the opponent) is now involved. It, however, takes due notice of the assessment of these facts, evidence and arguments as contained in the reasons of the decision of the board of appeal.
Date retrieved: 17 May 2021