10.2.1 Binding effect on examining divisions

The board in T 366/92 pointed out that according to Art. 111(2) EPC 1973 the examining division was bound by the board's decision only to the extent that it had been decided that the subject-matter of Claim 1 was novel when compared with the prior art known from D2 and that the claim met the requirements of Art. 84 and 123(2) EPC 1973. See also T 255/92.

In T 2558/18, the board dealt with the binding effect on an examining division of a remittal with precisely specified documents for the purposes of R. 71(3) EPC. It observed that, under Art. 111(1), second sentence, EPC, a board could either exercise any power within the competence of the department which was responsible for the decision appealed (alternative 1) or remit the case to that department for further prosecution (alternative 2). In its catchword, the board summarised as follows: where a board remits a case to the examining division for the grant of a patent in a precisely specified version, i.e. with precisely specified claims, description and drawings, the decision on this version is taken by virtue of the first alternative in Art. 111(1), second sentence, EPC. The version is binding on the examining division in accordance with the legal principle enshrined in Art. 111(2) EPC (res judicata), on the basis of which the remittal is also ordered. The procedure under R. 71(6) EPC is inapplicable in view of the binding effect arising from Art. 111(2) EPC by virtue of Art. 164(2) EPC.