T 2227/11 - Internet citation

Key points

• " In particular, the appropriate standard of proof for internet citations is the balance of probabilities." 
• About the standard of proof in general: " The EPO standard of proof is generally the balance of probabilities. By way of exception, the standard of proof of the balance of probabilities is shifted to a standard of proof beyond reasonable doubt mainly in opposition where only one party has access to information eg concerning an alleged public prior use. The difficulty of the other party to gain access to information in support of no such public prior use having taken place, allowing it to counter-argue, has caused the case law to tend in this case toward expecting the public prior use to be proved beyond reasonable doubt"
• Compare, about public prior use, T 2237/14

EPO T 2227/11 - link 

Reasons for the Decision

1. Admissibility of the appeal

With letter of 13 September 2011, the applicant was inter alia informed that:

the first decision refusing the application dated 11 May 2011 had been cancelled,

the second decision refusing the application dated 28 July 2011 was valid, and

the time limits as mentioned on Form 2019 (ie with respect to Artcile 108 EPC) were calculated from the second decision.

The findings in this letter are, however, incorrect as the first decision could only have been "cancelled" by the examining division by way of an interlocutory revision in accordance with Article 109(1) EPC 1973. However, according to the file no interlocutory revision was decided by the examining division (see also Case Law of the Boards of Appeal of the EPO, 7th edition 2013, III.K.4.1.4).

The second decision dated 28 July 2011 is, therefore, null and void.

Accordingly, contrary to what is stated in this letter, the date of notification of the decision for the purposes of Article 108 EPC remains that of the decision posted on 11 May 2011 and is accordingly 21 May 2011 (cf Rule 126(2) EPC).

However, as the first notice of appeal, the first appeal fee and the statement setting out the grounds of appeal were all received within the prescribed time limits as of 21 May 2011, the appeal is admissible.

2. Internet citations

The appellant disputed that D1 and D2 were prior art under article 54(2) EPC. According to T 1134/06, the fact that an internet disclosure was state of the art under article 54(2) EPC should be proved beyond any reasonable doubt. The facts and evidence had to meet the criteria established by the jurisprudence in respect of prior use, ie, they had to answer the questions when the internet disclosure was made available to the public, what was made available and under which circumstances was it made available. Such evidence was not shown by the examining division.

In the board's judgement, however, the examining division was right to comply with the practice followed at the EPO when citing documents retrieved from the Internet provided in the Notice of the EPO concerning internet citations (OJ EPO 8-9/2009, pages 456-462)) which is of a later date than decision T 1134/06 referred to by the appellant. It is noted that the examining division thereby also acted in accordance with the instructions provided in the Guidelines for Examination in the EPO in force at that time (cf C-IV, 6.2; Version April 2010). In particular, the appropriate standard of proof for internet citations is the balance of probabilities.

The EPO standard of proof is generally the balance of probabilities. By way of exception, the standard of proof of the balance of probabilities is shifted to a standard of proof beyond reasonable doubt mainly in opposition where only one party has access to information eg concerning an alleged public prior use. The difficulty of the other party to gain access to information in support of no such public prior use having taken place, allowing it to counter-argue, has caused the case law to tend in this case toward expecting the public prior use to be proved beyond reasonable doubt (see also Case Law of the Boards of Appeal of the EPO, 7th edition 2013, I.C.2.5).

In the specific case of internet citations of prior art, both the EPO and the parties to the proceedings generally have equal access to the relevant information notably concerning the authenticity of its publication date and content. Accordingly, there is no reason to deviate from the standard of proof of the balance of probabilities.

Indeed, while the board agrees with the detailed reasoning in T 1134/06 that internet citations of prior art entail a number of difficulties in assessing the authenticity of notably the publication date and the content, in its judgement there is no reasons to impose a stricter standard of proof.

It is understood that these difficulties may require some far-going investigations in the matter and the provision of supporting evidence. In the board's view, however, it is not because the matter is more complicated that a stricter standard of proof should be adopted.

The burden of proof generally lies with who affirms. In the specific case of internet citations of prior art cited by the EPO, the burden of proof thus lies with the EPO. If the EPO however is satisfied that, on the balance of probabilities, the internet citations constitutes prior art, it is then up to the party to prove otherwise.