3.5. Examination after remittal for further prosecution

If a case is remitted from the boards of appeal for further prosecution, the examining division must check whether requests from examination proceedings prior to the appeal are still outstanding and must give the party an opportunity to comment (see T 1494/05; see also Guidelines E‑X, 2.1 – March 2022 version).

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, insofar as the facts, e.g. the subject-matter of the patent and the relevant state of the art, are the same (Guidelines E‑X, 4 – March 2022 version).

In T 79/89 (OJ 1992, 283) the board rejected the appellant's main request, and remitted the case to the department of first instance for further prosecution on the basis of the auxiliary request. In this case, Art. 111(2) EPC 1973 was applicable, according to which the department of first instance shall be bound by the ratio decidendi of the board of appeal, insofar as the facts are the same. The ratio decidendi of the board of appeal's previous decision was that the subject-matter of the main request was not allowable, but that the grant of a patent in accordance with the auxiliary request was subject to a consideration of its patentability by the examining division. In this case, in the board's judgment, following the issue of the board's previous decision, the examining division clearly had no power to re-open examination on the basis of the claims which the appellant requested (with subject-matter corresponding to the previously rejected main request). Having examined the subject-matter of the auxiliary request for patentability and found no objection to it, the examining division was bound to issue a communication under R. 51(4) EPC 1973 with a text based on the auxiliary request. Furthermore, in the absence of approval of such text, in the board's judgment the examining division was bound to refuse the application, for the reasons set out in its decision. Since the examining division had no power to re-open examination in respect of the claims as requested by the appellant, in the context of the appeal in question the board necessarily had no power to re-open examination in respect of such claims, because it could only exercise power which was within the competence of the examining division (Art. 111(1) EPC 1973). Thus, the main request of the appellant had to be refused.