Just Patent Law Blog: T 2027/23 - (I) On evidence and appellate review of findings of fact

Key points

"The appellant [proprietor] has challenged the findings of the opposition division regarding the public prior-use vehicle."
"the board notes that, on appeal, the burden is on the party challenging a fact to demonstrate that the first-instance department erred in its finding of fact. "

Note, this can be the appellant or respondent because a decision favorable to the respondent in the overall result can still contain findings of fact in favour of the appellant.

"In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous. Only if the party succeeds in discharging this burden and demonstrating such an error will the board establish the facts on its own if this is necessary for reaching a decision (see T 1138/20, Reasons 1.2.5)."

Of course, pointing out one error is sufficient, and the board will then review the specific alleged fact that is affected by that error in the OD's evaluation of the evidence.

"The case law of the Boards of Appeal has identified a non-exhaustive list of typical situations where a finding of fact may be overruled, namely (i) failure to take into account essential points, (ii) relying, for the conclusion, on irrelevant subject-matter, or (iii) violation of the laws of thought, for instance in the form of logical errors and contradictions in its reasoning (T 1418/17, Reasons 1.3; see also T 42/19, Reasons 3.2 and T 1138/20, Reasons 1.2.5)."

The list is helpful, but precisely because of that, we should not forget it is a non-exhaustive list.

" The appellant requested that the testimony of Mr. Wieser should be disregarded in its entirety, because it was not credible and consequently the witness' credibility should be re-assessed and some statements in the decision under appeal should be disregarded."
" The board, first of all, notes that according to the appealed decision, the witness' credibility was not questioned by the proprietor (Reasons 2.1.2). Lack of credibility can thus not be an argument for discarding the witness' statement."

As a general rule, this statement could be correct (Art. 12(6)(s.2)), but there could be exceptions.

" The appellant further highlighted the fact that the information provided by the witness was handed to him by other people and was based on documents collected many years after the sale [which was in 1987]."
The board considers that this was correctly recognised by the opposition division. It was precisely for this reason that the opposition division considered the probative value of the testimony to be limited. The opposition division therefore prudently based its decision not only on Mr. Wieser's testimony, but also on Mr. Noe's affidavit (D10a) that confirmed, independently from Mr. Wieser's testimony, that the "Feuerwehr Tauberbischofsheim", in 1987, received from the company "Metz" a vehicle with a turnable-ladder mounting and the corresponding operation manual D9, without confidentiality obligations; [photos and vehicle registration certificate] "

Note, if the proprietor wished to challenge the affidavit of Mr. Noe, he should have requested a witness hearing of Mr Noe.

"Finally, the mere fact that other witnesses could have been offered does not call into question the credibility of the witness."

On the inspection of the vehicle by the OD
From the minutes (see p.29 of PDF of the minutes): "The oral proceedings were interrupted at 10:22 to allow the participants to move outside the building of the EPO, where the vehicle was parked." See also p.48 of the PDF for a protocol of the inspection.
(I acknowledge that many younger colleagues may no longer recognise the building, never having had oral proceedings in it).
" The appellant argued that there was insufficient evidence that the vehicle inspected in the course of the oral proceedings before the opposition division was the one sold to the fire brigade in 1987 ...

The protocol of the inspection, page 48, mentions that a type plate with the year 1987 was observed inside the inspected vehicle.

Standard of proof
"With regard to the fifth point concerning the applicable standard of proof, the board notes that in the case at issue the evidence does not lie exclusively within the sphere of the respondent. Indeed, the vehicle was received by the fire brigade and was in the brigade's possession and was later sold to a third party. Even if the board had been minded to apply the standard of "up to the hilt" or "beyond reasonable doubt" in cases where evidence was in the exclusive possession of the respondent, there would be no place for such application under the factual circumstances of this case.

Note, the company selling the vehicle, Metz, was later acquired by the current opponent.

"In any event, the present board, in a previous decision (see T 1138/20, Reasons 1.2.1), held that regardless of the specific circumstances of the case, only one standard of proof should apply, namely that the deciding body, taking into account the circumstances of the case and the relevant evidence before it, at the end of the day, should be convinced that the alleged fact had indeed occurred (as confirmed in T 733/23, Reasons 3.2, but see also T 2463/22, Reasons 4.5.10 and 4.5.12 in that regard)."
Confidentiality
The Board, obiter it seems: "manual D9 was made available to the staff of the fire brigade who are certainly members of the public. The fact that these members of the public should not make the manual available to competitors does not change the fact that at least some members of the public have already taken notice. It is not necessary for a document, contrary to what the appellant seems to argue, to be made available to all and sundry for it to be considered "publicly available". Instead, it is sufficient for the document to be made available to some (or even one) member of the public. In the case at issue, this was undoubtedly so."

The above remark was obiter and given the point below, not critical to the case. Nevertheless, I doubt it is correct. If the (head of the) Firebrigade Department (as the recipient of the manual) had signed a secrecy agreement, then the manual is not public, and the employees (volunteers or not) of the fire brigade were not 'members of the public'. Also, a government body can bind itself to secrecy (contractually, vis-à-vis suppliers). Evidently, it still is an organisation under public law in such a case. Its employees are possibly public officers or civil servants, but not members of the public in the sense of Art 54 EPC in respect of the secret information.

"To prove an obligation of secrecy, the appellant further referred to the copyright notice on pages 2 and 4 of document D9, which reads in relevant part:"... Ohne unsere schriftliche Genehmigung dürfen sie nicht kopiert oder vervielfältigt werden, auch nicht dritten Personen, insbesondere Wettbewerbern mitgeteilt, oder zugänglich gemacht werden."
" the board first notes that copyright notices can be found in almost all published books without the readers of such books being thereby bound to secrecy. "
I don't know if the cited sentence is just a normal copyright notice. On the other hand, it is not a signed NDA either.

EPO

The link to the decision can be found after the jump.

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