T 0314/18 - OD should have heard witness

Key points

• The opponent submitted a public prior use in the Notice of opposition and offered a witness. The OD did not hear the witness after deciding that “the alleged prior use was insufficiently substantiated in the notice of opposition with respect to its date, subject-matter and circumstances and that the lack of adequate substantiation could not be removed by hearing of the proposed witness”. 
•  The OD refers to GL E-IV 1.2 where it is said that “If the testimony of a witness is offered, the opposition division may decide to hear this person in order to verify the facts for which this witness is brought forward, e.g. the prior use of the claimed product in an undertaking or the existence of an obligation to secrecy. For adequate substantiation the notice of opposition must make clear these facts, as witnesses are meant to serve for corroboration of facts brought forward, not for supplying these facts in place of the opponent”. I think that 'substantiation' here refers to 'the request to hear the witness'.
• “The Board agrees with the [opponent] that, in particular having regard to the existing evidence on file as well as to the doubts that the opposition division had with respect to its probative value, the opposition division should have heard the witness. From the language used to offer the witness it is clear upon reading the notice of opposition that - contrary to the view of the opposition division and the respondent - the appellant offered the witness solely to corroborate the facts already brought forward in support of the alleged prior use  [...].”
• “No provision of the EPC requires that an alleged prior use be conclusively proven within the opposition period. When referring to the EPO Guidelines G-IV, 7.2 and E-IV, 1.2, and arguing that the lack of adequate substantiation of the prior use in the notice of opposition could not be removed by hearing the witness, the opposition division mixed up the submission of facts and the proof required to establish them”.
• “By refusing to hear the proposed witness, the opposition division proceeded in fact to assess evidence that had not been established, although it appeared to be prima facie relevant for the decision to be taken. This is procedurally incorrect. The opposition division thus has infringed the appellant's right to be heard under Articles 117(1) and 113(1) EPC.”

EPO  T 0314/18 -  link


3. Alleged public prior use

3.1 With respect to the public prior use alleged by the appellant, the opposition proceedings can be summarised as follows:

3.1.1 In the notice of opposition, the appellant alleged that the claimed invention was anticipated by a public prior use in the form of several sales of the pocket spring coiling machine PWS-100 by REMEX AG before the patent's filing date (19 December 2012). The appellant explained in detail why the claimed subject-matter was anticipated by the machine PWS-100 as described in operating manuals O1 and O2 and document O3, when used in the system PST-200 as disclosed in document O5. The appellant submitted that O1 to O3 were printed before 19 December 2012, whereby O1 and O2 were delivered with the machine. To confirm the alleged sales the appellant provided copies of shipment orders, delivery notes and invoices relating to the sale and delivery of a machine PWS-100 and the corresponding system PST-200 by REMEX AG to AGRO International (Germany) in 2007 (O6), Charles Blyth & Co. Ltd. (England) in 2007 (O7) and Kovas (Lithuania) in 2010 (O8). These different public disclosures were subsumed under the term "prior use". The appellant asserted that the sales were not subject to any confidentiality agreement. Finally, the appellant offered the hearing of a witness (Mr Nussbaum) to corroborate the date, the subject-matter and the circumstances of the alleged prior use (page 7) as well as the correctness of the appellant's submissions with respect to the technical features and the mode of operation of the machine PWS-100 and the system PST-200 (page 9).




3.1.2 In its response dated 30 May 2016, the respondent contested the alleged prior use.

3.1.3 In the annex to the summons to oral proceedings, the opposition division expressed its preliminary non-binding opinion on the alleged public prior use as follows (point 4.1):

- the alleged public prior use was insufficiently substantiated in the notice of opposition, in particular it was not supported with facts which made it possible to determine the date on which the alleged use had occurred, what had been used and all the circumstances relating to the use in order to determine to what extent it was made available to the public;
- the lack of adequate substantiation could not be removed by hearing of the proposed witness, as he should serve for corroboration of facts brought forward, not for supplying these facts in place of the opponent;
- documents O1 and O2 themselves were intended to be kept confidential; and
- even if the alleged prior use were proven, its subject-matter would not be relevant for the evaluation of the novelty of the claimed subject-matter, in particular because the teaching in paragraph 15.7.4.2 of O1 or O2 did not anticipate the feature of the back folded transverse seams as required in claims 1, 7 and 11.

3.1.4 In its response to the summons dated 4 August 2017, the appellant submitted that, contrary to the opposition division's view, all the facts necessary to determine the date, the subject-matter and the circumstances of the alleged public prior use had been duly provided in the notice of opposition, and that the hearing of the witness had been proposed only in case there was any doubt, but not to close any gap in the substantiation. The appellant also filed further evidence, namely operating manuals O16 to O18, to confirm that the machine PWS-100, when used in the system PST-200, anticipated the feature of the back folded transverse seams as required in claims 1, 7 and 11.

3.1.5 In its written decision, the opposition opposition held essentially:

(a) that the alleged prior use was insufficiently substantiated in the notice of opposition with respect to its date, subject-matter and circumstances and that the lack of adequate substantiation could not be removed by hearing of the proposed witness (points 3.1 and 4.3 of the reasons, where reference is made to EPO Guidelines G-IV, 7.2);
(b) that, in the notice of opposition, the appellant had made a generic statement that the witness could confirm the when, what, and how of the prior use but had failed to indicate what specific facts would be confirmed by the witness (point 3.1 of the reasons, where reference is made to EPO Guidelines E-IV, 1.2);
(c) that operating manuals O1, O2 and O16 to O18 did not form part of the prior art in the sense of Article 54(2) EPC, in particular because they expressly referred to a confidentiality clause and it had not been proven beyond reasonable doubt that they were delivered together with the machine PWS-100 and the system PST-200 to the customers mentioned in O6 to O8 (point 4.3 of the reasons); and
(d) that it had not been proven beyond reasonable doubt that the machine PWS-100 and the system PST-200 described in O1, O2 and O16 to O18 were actually delivered to the customers mentioned in O6 to O8 (point 4.3 of the reasons).

Thus, the alleged prior use was not taken into account when assessing the novelty and inventive step of the claimed invention.

4. Relevance of the alleged prior use

4.1 When dealing with an allegation of public prior use or disclosure, the first issue to be decided is its relevance for the case at hand. Hence first of all, it is essential to assess the basic information regarding the object of the use (what). Information regarding the circumstances and date thereof then becomes important, in order to assess whether the allegation could be part of the state of the art (prior and public character of the alleged use/disclosure). This information needs to be on file at least on a prima facie basis, although it does not need to be exhaustive or indeed conclusive.

4.2 In the present case, the opponent submitted in the notice of opposition all the necessary facts and information for enabling an assessment of the relevance, and thus had substantiated its case in this respect. It would appear that the opposition division, when discussing substantiation, was rather considering issues of proof. This is however a subsequent step.

4.3 Regarding the facts relating to the prior use, the Board is of the opinion that the alleged prior use is prima facie highly relevant for assessing the novelty, and possibly the inventive step, of the claimed invention. In particular, it appears to follow from O1 (paragraphs 15.6.3, 15.7.3 and 15.7.4.2) that the machine PWS-100 comprises two lateral blowpipes in the immediate vicinity of a transverse welding apparatus, the blowpipes being designed to blow the fabric material in excess between two spring pockets towards the centre of the spring string prior to transverse welding, thereby folding the fabric inwardly and avoiding any unevenness at the welding points. This seems to result inevitably in back folded transverse seams, as required in claims 1, 7 and 11.

5. Admission of O19 to O26 in the appeal proceedings

5.1 The Board considers that the filing of O19 to O26 in appeal is a legitimate reaction of the appellant to the opposition division's decision that the alleged prior use was insufficiently substantiated and that the witness did not need to be heard; further, that the appellant exercised appropriate care by filing these new pieces of evidence as early as possible in the appeal proceedings.

5.2 The Board cannot find any indication in the file to suggest that the appellant deliberately chose not to submit the new evidence in the opposition proceedings.

5.3 Even though the appellant already filed documents O16 to O18 to substantiate further the alleged prior use in reaction to the preliminary opinion of the opposition division accompanying the summons to oral proceedings, it came as a surprise to the appellant that the opposition division finally decided not to hear the proposed witness.

5.4 Therefore, the Board sees no reason to disregard O19 to O26, irrespective of their relevance (Article 12(4) RPBA 2007).

6. Substantial procedural violation

6.1 The Board agrees with the appellant that, in particular having regard to the existing evidence on file as well as to the doubts that the opposition division had with respect to its probative value, the opposition division should have heard the witness.

6.2 From the language used to offer the witness it is clear upon reading the notice of opposition that - contrary to the view of the opposition division and the respondent - the appellant offered the witness solely to corroborate the facts already brought forward in support of the alleged prior use (see points 3.1.1 and 3.1.4 above; see page 9, paragraph 4 of the notice of opposition, "Als Zeuge, welcher die Richtigkeit der obigen Ausführungen und die beschriebene Funktionsweise der Federwindemaschine PWS-100 sowie der Gesamtanlage PST-200 belegen kann, wird wiederum angeboten ... Hr. Daniel Nussbaum").

6.3 No provision of the EPC requires that an alleged prior use be conclusively proven within the opposition period. When referring to the EPO Guidelines G-IV, 7.2 and E-IV, 1.2, and arguing that the lack of adequate substantiation of the prior use in the notice of opposition could not be removed by hearing the witness, the opposition division mixed up the submission of facts and the proof required to establish them (see point 4.2 above).

6.4 By refusing to hear the proposed witness, the opposition division proceeded in fact to assess evidence that had not been established, although it appeared to be prima facie relevant for the decision to be taken. This is procedurally incorrect.

6.5 The opposition division thus has infringed the appellant's right to be heard under Articles 117(1) and 113(1) EPC (see comparable cases e.g. T 716/06 of 17 June 2008, point 4 of the reasons; T 1363/14 of 30 May 2016, point 2 of the reasons; T 2238/15 of 11 April 2018, point 2 of the reasons).

7. The above mentioned substantial procedural violation is sufficient reason for setting aside the decision under appeal, and justifies the remittal of the case to the opposition division (Article 111(1) EPC and Article 11, second sentence, RPBA 2020), as well as the reimbursement of the appeal fee (Rule 103(1)(a) EPC).

8. It follows from the preceding considerations that it is still in dispute between the parties whether the alleged public prior use has been sufficiently proven. In particular, it is in dispute among the parties whether the alleged prior sales took place, which machines were actually sold and whether the sales were subject to confidentiality conditions.

In the oral proceedings before the Board, the respondent submitted that it followed from the written declaration O24 of the proposed witness that, at the time of the alleged sales, he was working in Mexico. Therefore it was unlikely that the hearing of the witness could provide conclusive evidence of the alleged sales in Germany, England and Lithuania. As indicated above in respect of the opposition division's related reasoning, this amounts to an inadmissible assessment of evidence before it has been established.

9. However, since the case is to be remitted, the Board refrains from further comments or indeed from taking a final decision on these issues.

10. Nevertheless, given the nature of the points at issue, it seems that it would be appropriate to enlarge the opposition division by the addition of a legally qualified examiner (Article 19(2), fifth sentence, EPC).

11. Under these circumstances there is no need to address the admissibility into the proceedings of auxiliary requests 1 to 3, let alone their allowability. However, the Board notes that auxiliary requests filed in due time with the reply of a patent proprietor to the statement of grounds of appeal of an opponent are normally to be taken into consideration (Article 12(4) RPBA 2007).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.

3. The appeal fee is to be reimbursed.