Tuesday, 23 February 2010

T 550/04 – Recording Refused

I have to admit that the illustration I have chosen is somewhat misleading. It is true that the EPO does not allow parties to make audio recordings during oral proceedings, but this is not what the present decision is about. It rather deals with recording of statements of a party in the minutes of oral proceedings.

During the oral proceedings (OPs) before the Board the [opponent] requested to record in the minutes of the proceedings that the expression “oxygen-free atmosphere” in present claim 1 had the meaning of “completely oxygen-free atmosphere”. [5.1]

However, according to the jurisprudence of the Boards of Appeal (see T 928/98 and T 263/05 [8 to 8.11]) it is not the function of the minutes to record statements which a party considers will be of use to it in any subsequent proceedings in national courts, for example in infringement proceedings as to the extent of protection conferred by the patent in suit. This is because such statements are not “relevant” to the decision which the Board has to take, within the meaning of R 124(1). Such matters are within the exclusive jurisdiction of the national courts. [5.2]

In the present case, the reasons for applying an oxygen-free atmosphere and a method to achieve it are indicated in the patent in suit. Moreover, the statement in question would not have an impact on the definition of the subject-matter of the patent for the questions the Board had to decide in these proceedings. [5.3]

It follows that the desired statement is not a proper subject-matter of the minutes. Consequently, the request is refused. [5.4] 

As far as I can see, the Boards almost systematically refuse to record such statements in the minutes. This is a nuisance for opponents, because statements of this kind may become crucial in national infringement proceedings. At least in France there is a clear tendency of the Courts to take into account statements made by the patentee during the grant and opposition proceedings. Therefore, I would say that opponents should continue to request recording of such statements as the Board will discuss the question, which means that the statement is at least recorded in the appeal decision, which might be better than nothing.

To read the whole decision, click here.