T 0460/13 - Evidence of public prior use in appeal is too late

EPO T 460/13

For the decision, click here 

Key points

• The opponent had filed extensive documentation to back up its alleged public prior use first with the statement of grounds. The Board deems this essentially to be too late. Public prior use must be substantiated already with the Notice of Opposition.
• The Board also explains that in case the OD admits an attack based on public prior use, but does not considered it convincing, the statement of grounds must directly address why the decision of the OD is incorrect, otherwise the attack is yet inadmissible in appeal.
• During appeal, the opponent switched from lack of novelty,  to lack of inventive step in view of the public prior use. This new inventive step was not admitted, since it should have been fully substantiated with the Statement of Grounds. 

Summary of Facts and Submissions

I. This decision concerns the appeals filed by the opponent and the patent proprietor against the decision of the opposition division that European patent No. 1 923 440 as amended met the requirements of the EPC.

II. The opponent had requested revocation of the patent in its entirety on the grounds that the claimed subject-matter was neither novel nor inventive (Article 100(a) EPC), and that the patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC).

III. The documents submitted during the opposition proceedings included:

D1 - D25: ;

S05: Report of S. Martina of her visit to Straptech-Maillis (1 February 2005);

S10a: "BI-DCP Distribution Table" of sample BASF DS3547X;

S10b: Weight Distribution Job 28/Run 128 of sample BASF DS3547X;

S10c: Volume distribution of Acronal**(TM) DS3457X; and

S12c: "Herstellvorschrift: Plextol D260".

[...]

V. The opposition division decided that the main request was not inventive but that auxiliary request 1, which is identical to the main request in the present appeal proceedings, was allowable: [..]

- The claimed subject-matter was novel over the public prior uses Fabo, Straptech and BASF. As regards the public prior uses Fabo and Straptech, it was doubtful whether the allegedly prior used products, namely the batches sold to Fabo and Straptech, had been prepared with the recipe given in S12c. Furthermore, the actual monomer composition applied in the recipe disclosed in S12c was unknown due to the facts that several data in S12c were blacked out, others were coded with acronyms without definition of their meanings, and at least one line had been deleted at the bottom of the table in S12c, thereby creating doubt as to whether or not other constituent(s) were present. S12c thus did not constitute evidence that the allegedly public prior used products did not contain aziridines. As regards the public prior use BASF, firstly the composition of Acronal**(TM) DS3547X referred to in S05 was not mentioned anywhere in the file, secondly, the nature of the film used for preparing the adhesive product, i.e. onto which the Acronal product was applied, was not mentioned in any document on file, and thirdly, there were several gaps in the chain linking the public availability of the product Acronal**(TM) DS3547X and the analysis sheets S10a-c. Fourthly, D25 could not help to establish whether the allegedly prior used product contained aziridines or not since D25 was published after the priority date of the opposed patent.

VII. On 13 May 2013, the opponent filed its statement setting out the grounds of appeal together with the following documents:

A01: Overview of documents and evidence;

A02a: Overview of the documents filed with regard to the public prior uses Fabo, Straptech and BASF;

A02b: Overview of the documents filed with regard to the public prior use MAC;

A3: Test report "Messergebnisse Geräuschentwicklung"; [...]

D26 - D40:

Supplementary evidence relating to prior use "Fabo"

F12: Way bill "KVO-Frachtbrief für den Güterfernverkehr"; [...]

F23: "Kunststoffanalytik", sample "Fabo Anlage 03; transparent";

Supplementary evidence relating to prior use "Straptech"

S10d: Analysis of PL-PSDA data of Acronal**(TM) DS3457X Pr.0403200501; [...]

S18: "Materialkalkulation", delivery number 83114463;

Supplementary evidence relating to prior use "Mac"

M1: Invoice for 1000 kg Plextol**(TM) X4500 CA. 57% IBC, material code 900915694, dated 28 January 2005; [...]

M38: Affidavit of R. Lastrucci, signed on 8 May 2013.

In its statement of grounds of appeal, the opponent requested that Ms Capaccioli, Ms Menegato and Mr Conrads be heard as witnesses on the public prior uses.

[...]

Reasons for the Decision

5. Admissibility of the public prior use attack Mac

5.1 According to the statement of grounds of appeal, the public prior use Mac Autoadesivi s.r.l. ("Mac") destroys the novelty of the claimed subject-matter.

5.2 The proprietor requested that this public prior use attack not be admitted into the proceedings because no documentation or proof of any kind had been submitted during the opposition proceedings as regards the alleged Mac public prior use. In fact, this objection had been made for the first time during the appeal proceedings.

It is established case law (see, e.g., decision T 328/87) that in order to substantiate a public prior use, information must be provided as to what was made available, when it was made available, where it was made available, by whom it was made available and, finally, how it was made available.

The public prior use Mac was mentioned in the notice of opposition under the heading "8.3. Weitere offenkundige Vorbenutzungen" on the penultimate page, together with the following information:

Delivery date: 24 March 2005
Client name: MAC AUTOADESIVI srl
Article: PLEXTOL X 4500 CA.57.

This information does not address at all the questions "what, when, where and how", needed for the substantiation of a public prior use. At no point during the opposition proceedings did the opponent provide any such substantiation and, accordingly, this public prior use was not dealt with in the decision of the opposition division at all.

Therefore, the attack on the basis of the public prior use Mac in the statement of grounds of appeal constituted a new attack, made for the first time in the appeal proceedings.

5.3 The essential nature of appeal proceedings is to determine whether the decision reached by the department of first instance was correct (G 9/91, point 18; G 4/93, point 5; G 1/99, point 6.1). Appeal proceedings are not a means of continuing the first instance proceedings whereby a party is free to improve or repair holes in its case by filing additional material. In this respect, it lies within the discretion of the board to hold inadmissible evidence which could have been presented in the first instance proceedings.

As set out above, the alleged public prior use Mac was mentioned in the opposition proceedings but not pursued by the opponent: it is not even mentioned in the decision of the opposition division. It is not acceptable to substantiate the alleged public prior use Mac for the first time with new evidence in the appeal proceedings, i.e. the numerous documents submitted under the heading "Supplementary evidence relating to prior use Mac" (point VII above). The board therefore saw no reason to admit new evidence relating to the alleged public prior use Mac and the novelty attack associated therewith into the proceedings.

5.4 The present board is aware that in exceptional cases, a new novelty objection based on a new document in appeal proceedings has been admitted on the ground that it was prima facie relevant (see, e.g., T 2542/10, point 2.2.2). However, in the present case, all that is contained in the statement of grounds of appeal with regard to the alleged public prior use Mac is a reference to tables A02a and A02b, without further explanation. Table A02b, which deals with four public prior uses relating to Mac, namely Mac-1, Mac-2, Mac-3 and Mac-4, does not contain any information as regards, e.g., the questions of when, where, by whom and how the adhesive tape mentioned in this table ("avana" (M17) and "transparent" (M18)) had been rendered accessible to the public before the priority date of the patent. Consequently, the alleged public prior use attack Mac is not prima facie relevant.

5.5 In the exercise of its discretion under Article 12(4) RPBA, the board therefore decided not to admit the alleged public prior use attack Mac into the proceedings.

6. Admissibility of the further public prior use attacks

6.1 The statement of grounds of appeal relied on three further public prior use attacks, namely:

- the alleged public prior use of the product Acronal**(TM) DS 3547X from BASF, which was handed over to PolymerLatex (see S05), hereinafter referred to as the public prior use "BASF";

- the alleged public prior use based on the delivery of the product Plextol**(TM) X4365 to Straptech, hereinafter referred to as the public prior use "Straptech"; and

- the alleged public prior use based on the delivery of the product Plextol**(TM) D260 to Fabo, hereinafter referred to as the public prior use "Fabo".

6.2 The opponent no longer relied on the alleged public prior use BASF in relation to its novelty and inventive step attacks as regards the main request. Consequently, the admissibility of this public prior use needs not to be dealt with in the present decision.

6.3 The public prior use: Straptech

6.3.1 Unlike the public prior use Mac, this public prior use was to at least some extent discussed in the notice of opposition and was dealt with in the decision of the opposition division. Hence, the above considerations made with regard to the public prior use Mac do not necessarily lead to the conclusion that the public prior uses Straptech is inadmissible.

6.3.2 As set out above when discussing the public prior use Mac, appeal proceedings aim at contesting a decision. This implies that reasons must be given in the statement of grounds of appeal why the decision under appeal should be reversed, amended or upheld (Rule 99(2) EPC and Article 12(2) RPBA). The submissions in the statement of grounds of appeal must be such as to enable the board (and any other party) to understand immediately why the decision is alleged to be incorrect, without first having to make investigations on their own (T 2532/11, points 2.2.1 and 2.2.5 and decisions cited therein: T 220/83, OJ EPO 1986, 249, headnote; T 213/85, OJ EPO 1987, 482, points 2 and 3; T 145/88, OJ EPO 1991, 251, headnote; T 169/89, points 2 and 3 and T 1581/08, point 3). Even assuming that laborious sequences of exercises would tell the reader what the appellant's case against the decision might be, such conjecture is exactly what the statement of appeal is designed to prevent (T 2532/11, point 2.5.1). It cannot be expected that a board fills in the missing links of the chain of reasoning of an appellant and thereby establishes a coherent and complete chain of argument for the appellant, no matter how straightforward it may seem in light of the particulars of the specific case (T 922/05, point 16).

6.3.3 Turning back to the present case, the opposition division decided that the subject-matter of claims 1 and 6 was novel over the public prior use Straptech.

This decision was based on two grounds, the first being that it was doubtful whether the allegedly prior used product, namely the batch sold to Straptech, had been prepared with the recipe given in S12c, which the opponent had relied upon as regards the composition of the allegedly prior used batch. The opposition division's second ground was that the monomer composition of the product disclosed in S12c was unknown due to the fact that several data in S12c were blackened, while others were coded with acronyms (such as NAPS) without definition of their meanings, and at least one line had been deleted at the bottom of the table in S12c, thereby creating doubt as to the presence or not of other constituent(s). S12c did thus not constitute evidence that the allegedly public prior used product did not contain aziridines.

As observed in the board's preliminary opinion, it is not clear how the opponent's submissions in the statement of grounds of appeal relate to the objections raised by the opposition division in its decision, in particular as regards S12c and the absence of aziridines. In fact, the only submission present in this respect in the statement of grounds of appeal is that F20 shows that no nitrogen compounds are detectable and thus aziridines are not present. However, F20 does not contain any reference to the recipe of S12c and thus does not address at all the opposition division's objections as regards this recipe. The opponent's submissions in the statement of grounds of appeal therefore do not put the board in a position to understand why the opposition division's decision on the public prior use Straptech were wrong in the opponent's view.

In response to the board's preliminary opinion, the opponent argued that the proprietor had brought forward its arguments concerning the public prior uses only during the oral proceedings before the opposition division and had submitted new auxiliary requests at the last moment during opposition proceedings. Therefore the opponent should be allowed to file further evidence with the statement of grounds of appeal in reaction to the proprietor's arguments and auxiliary requests.

The board acknowledges that indeed the statement of grounds of appeal would have been the appropriate point in time to react to the proprietor's claim requests. However, as set out above, in fact the opponent did not properly react and did not submit a substantiated attack on the basis of the alleged public prior use Straptech when filing the statement of grounds of appeal.

In the absence of any further submission of the opponent during the oral proceedings, the board did not see any reason to diverge from its preliminary opinion and decided not to admit the public prior use Straptech into the proceedings.

6.4 The public prior use: Fabo

6.4.1 In the same way as for the Straptech public prior use, it needs to be examined whether the statement of grounds of appeal puts the board and the proprietor in a position to understand why the opposition division's decision was said to be wrong. In this respect, the opponent argued during the oral proceedings that document F23 referred to in the statement of grounds of appeal disclosed the composition of the allegedly prior used batch of the product Plextol**(TM) D260 and provided evidence that this product did not contain aziridines. F23 indeed refers to an analysis of the product Plextol**(TM) D260 isolated from an allegedly prior used adhesive tape. It shows the monomer composition of this product and states that the nitrogen amount and the analytical results gave no indication that aziridines were present. The board therefore accepted the opponent's argument and admitted the allegation of a public prior use in relation to Fabo into the proceedings.

6.4.2 Incidentally, it is noted that F23 refers only to an adhesive tape containing Plextol**(TM) D260 and does not give any information about a tape with the product Plextol**(TM )X4365 having been the object of the alleged public prior use Straptech. This is why the board admitted the alleged public prior use Fabo but not Straptech.

7. Novelty

7.1 The opponent declared during the oral proceedings that it no longer made any novelty attack on the basis of the only public prior use admitted into the proceedings, i.e. the Fabo public prior use. Furthermore, the opponent accepted during the oral proceedings that the claimed subject-matter was novel over the cited written prior art.

7.2 In the absence of any novelty attack or any reason for not acknowledging novelty, the board accepts that the claimed subject-matter is novel.

8. Inventive step

8.1 Inventive step on the basis of the alleged public prior use Fabo

8.1.1 During the oral proceedings, the opponent argued that the subject-matter of claim 1 was not inventive in view of the public prior use Fabo as the closest prior art. The proprietor requested that this attack be not admitted into the proceedings.

As stated above, the allegation of a public prior use in relation to Fabo was admitted into the proceedings. The next issue would have ordinarily been whether the alleged Fabo prior use was in fact established. However, in view of the proprietor's request not to admit the new inventive step attack based on this public prior use into the proceedings, it appeared to be more economical to the board to decide first on whether such an attack should be admitted.

8.1.2 The only indication in the statement of grounds of appeal as regards the relevance of the public prior use Fabo for inventive step is the following:

"Aufgrund der geringen Abweichungen in der Monomerkonzentration, ist gegenüber den neugefassten Ansprüchen 1 und 6 zumindest keine erfinderische Tätigkeit gegeben."

The newly drafted claims 1 and 6 ("neugefasste Ansprüche 1 und 6") referred to in this statement can only be those of auxiliary request 1 found allowable by the opposition division, which request is identical to the present main request. The reference to small variations in the monomer concentration ("geringe Abweichungen in der Monomerkonzentration") can, in the opponent's favour, be interpreted to mean that the monomer concentration in claims 1 and 6 of this request is a distinguishing feature over the public prior use Fabo. However, the opponent's statement in the grounds of appeal does not permit any conclusion to be drawn as regards why the alleged public prior use Fabo constitutes the closest prior art, whether and if so what effect is obtained by the distinguishing feature and whether the claimed solution is obvious. The statement of grounds of appeal therefore does not put the board or the proprietor in a position to understand why in the opponent's view the claimed subject-matter lacks inventive step in view of the alleged public prior use Fabo.

Also during the further written proceedings, the opponent did not raise any inventive step attack on the basis of the alleged public prior use Fabo, not even after the board had observed in its preliminary opinion that D4 was considered to be the closest prior art.

The inventive step attack on the basis of the public prior use has thus effectively been made for the first time during the oral proceedings before the board.

This inventive step attack raises complex new issues, being precisely those issues which the statement of grounds of appeal was silent about, in particular why the alleged public prior use Fabo constitutes the closest prior art, whether and if so what effect is obtained by the distinguishing feature and whether the claimed solution is obvious. There would have been no possibility for the proprietor to react to this attack during the oral proceedings. It would have been, e.g., not possible to carry out experimental tests to study whether the difference identified by the opponent resulted in any effect. Consequently, neither the board nor the proprietor could be expected to deal with this attack at the oral proceedings without an adjournment.

The opponent argued that the proprietor had submitted its auxiliary request very late during the opposition proceedings such that the inventive step objection in the statement of grounds of appeal was a timely reaction to this claim request. The board acknowledges that indeed the statement of grounds of appeal would have been the appropriate point in time to react to the proprietor's claim request. However, as set out above, in fact the opponent did not properly react and did not submit a substantiated attack against this claim request on the basis of the alleged public prior use Fabo when filing the statement of grounds of appeal.

Therefore, the opponent's inventive step attack on the basis of the alleged public prior use Fabo was not admitted by the board under Article 13(1) and (3) RPBA.

[...]

9. Request to hear a witness

9.1 In its statement of grounds of appeal the opponent requested that Ms Menegato be heard as a witness as regards the processing of the product Plextol**(TM) X4500 and the sale of adhesive tapes by Fabo.

9.2 In its preliminary opinion, the board informed the opponent that the issues with regard to which Ms Menegato had been offered as a witness appeared not to be relevant to the reasons why the opposition division considered the public prior uses not to be pertinent. Therefore the offered testimony of Ms Menegato as witness would be irrelevant, such that the request to hear her as a witness was likely to be refused. Consequently, the board saw at that stage no reason to summon Ms Menegato as a witness.

No arguments were presented by the opponent in reaction to this preliminary opinion, either in writing or during the oral proceedings. The opponent simply affirmed at the oral proceedings its request that an invitation be issued to Ms Menegato to be heard as a witness.

In the absence of any arguments being presented after the issuance of its preliminary opinion, the board did not see any reason during the oral proceedings to diverge from this opinion that the offered testimony of Ms Menegato as a witness would be irrelevant.

9.3 In fact the irrelevance of the witness statement offered by the opponent became even more pronounced in the course of the oral proceedings. More specifically, during the oral proceedings the alleged public prior use attack BASF was withdrawn, the alleged public prior uses Mac and Straptech were not admitted into the proceedings and the inventive step attack on the basis of the alleged public prior use Fabo was equally not admitted into the proceedings. The issues for which Ms Menegato was offered as a witness, namely the processing of the product Plextol**(TM) X4500 and the sale of adhesive tapes by Fabo, would not have been related to the board's decisions on admissibility. The hearing of Ms Menegato as a witness could thus not have changed these decisions of the board.

9.4 Therefore the board decided to refuse the opponent's request that Ms Menegato be heard as a witness.

9.5 It is to be noted that the opponent was free to bring Ms Menegato to the oral proceedings. Should it have turned out that the offered witness statement had any relevance (which it did not), the board could have heard Ms Menegato. Furthermore, even after the oral proceedings had started in the absence of Ms Menegato, the opponent was free to request an adjournment of the oral proceedings such that Ms Menegato could have been heard as a witness later. Such a request could have been allowed by the board if the offered witness testimony had had any relevance (which it did not). Hence that no summons to hear Ms Menegato as a witness was issued during the written proceedings and the fact that oral proceedings were carried out in her absence did not violate the opponent's right to be heard.

Order

For these reasons it is decided that:

The opponent's appeal is dismissed.