NEWS FROM THE EPO

Darren Smyth of Marks & Clerk writes to inform the IPKat of a new decision from the EPO:

Hot off the press and not even on the EPO website yet! It can however be accessed via the EPO online file inspection.The EPO Board of Appeal caused much consternation with its decision T0998/99 (OJ EPO 4/2005, 240), stating that "Article 87(1) EPC does not provide for the possibility of filing several applications in respect of the same subject matter and therefore of the same invention in one and the same country over the priority period on the basis of a single priority document" (headnote 1). Most observers thought that this concept of "exhaustion of priority" was against both the letter and the spirit of the priority provisions of the EPC and the Paris Convention.

Fortunately, a recent decision T 0015/01-3.3.4 (relating to EP 0587780), not yet published on the EPO website but available via online file inspection, restores sanity and states that:

"The board concludes that the priority system of the EPC allow patent applicants to claim and enjoy the same priority right in more than one European application. The doctrine of exhaustion of priority rights is to be rejected."

A referral to the Enlarged Board of Appeal was considered, but rejected for the rather odd reason that "the board is not aware that the doctrine of exhaustion of rights has ever been applied or explicitly addressed in the first-instance practice of the EPO, or, with the exception of the of decision T 998/99, in the case law of the boards of appeal". But I personally fail to see what this fact could possibly have to do with the question of whether a referral is required for ensuring uniform application of law or settling an important point of law (which is the test for a referral). Surely, the question at issue must be considered an important point of law. It is still possible for the President will make a referral to the EBoA. In the meantime, boards of appeal can choose which decision to follow.

The IPKat says thanks Darren!