Last week, the IPKat sought the thoughts of his readers regarding reporting EPO decisions. Well, one of his readers, Darren Smyth, gave the IPKat not only his thoughts, but also a breakdown of important decisions during the month of May. There's so many that the IPKat has decided to report them in three installments. Here's the first, consisting of reports from the EPO Board of Appeal reported in the Official Journal during May - look out for the next one during the coming week:
This decision is primarily about whether post published documents can be taken as evidence of the state of the art before the priority date of the patent. However, I find it more interesting because it confirms the view of T1122/01 that presentations of the Power Point type are probably not appropriate during oral proceedings, because they change the character of oral proceedings from an oral character to a written character. However, the decision does not go so far as to say that such presentations can never be allowed. However, it will probably be necessary at the least that the content of the proposed presentation is submitted to the EPO and to the parties at least by the deadline for final written submissions.
This interesting decision appears to consider that the present EPO grant-stage practice under Rule 51(4) EPC is unlawful. The amendment to Rule 51 in 2002 was stated in the notice published at OJ EPO 2002,112 to include the change that express disapproval of the proposed text for grant is “no longer foreseen”. However, the Board of Appeal states that “this practice is not justified by the EPC for the reasons set out below”. It is further stated “present Rule 51 EPC does not provide any way to express disapproval. But this does not mean that the applicant can be deprived of the possibility of expressing its disapproval.” It would appear that the Board of Appeal is suggesting either that the Rule itself be changed, or that the wording of the Communication under Rule 51(4) be changed.
This decision states that, in a case where there is a request considered allowable on which a Rule 51(4) EPC Communication is to be sent, but there are also not allowed higher-ranking requests, the Communication under Rule 51(4) EPC is deficient if it is not accompanied by reasons why the higher-ranking requests are not allowed. This Communication should also expressly mention the option of maintaining the disallowed requests, thus reminding the applicant and the Examining Division of the possibility for the applicant of asking for a written appealable decision on these higher-ranking requests.