T 0473/13 - Up to the hilt

Key points

• The board considers moreover that the much-cited "up to the hilt" criterion does not apply in the present circumstances, since that case law was developed for the situation in which a prior use was by the opponent, which is not the case here.

EPO T 0473/13 - link

Reasons for the Decision

11. Alleged public prior use - Public availability

11.1 The board is of the opinion that in the circumstances described in the documents D24 to D28, it is highly likely that, as part of the cooperation between ABB and the utility VB-Elnät described there, employees of VB-Elnät would have gained knowledge of the technical nature of the ABB equipment, specifically as a prerequisite for giving permission for this equipment to be connected to their network. The board therefore agrees with the intervener that the issue which needs to be decided in order determine whether information concerning the prior use was made available to the public is that of whether those employees were bound by a confidentiality agreement. Contrary to what was argued by the respondent, the board considers it unlikely that the utility would have agreed to the ABB equipment being connected to the network without knowing its nature, at least to the degree of detail defined in granted claim 1 of the patent in suit.

11.2 The board also agrees with the intervener that in these circumstances the burden of proof initially lies with the respondent to establish the existence of a confidentiality agreement. Concerning this issue, the respondent has presented arguments that in the context of a cooperation project between two companies in this technical field, as described for instance in D26, section 3.1, the normal practice would have been for there to have been at least an implicit duty of confidentiality on both companies involved. The respondent has moreover presented supporting evidence for this in the form of the affidavit by Lars Weimers, the project manager of the Hellsjön Project (and inventor of the patent in suit). Contrary to the argument of the intervener, the board considers these arguments and the supporting evidence to be sufficient to discharge the initial burden of proof on the respondent in this respect. The board considers moreover that the much-cited "up to the hilt" criterion does not apply in the present circumstances, since that case law was developed for the situation in which a prior use was by the opponent, which is not the case here.

11.3 Thus, in the view of the board, the burden of proof has shifted to the intervener to establish that there was no confidentiality agreement. The intervener has however presented no arguments or evidence which objectively might cast doubt on the existence of a confidentiality agreement, but has merely presented speculation in this respect. The respondent has argued that he was not able to do more than this, because all of the evidence relating to the prior use was in the hands of the respondent. The board considers that this is not the case, because at the very least the intervener had the possibility to contact VB-Elnät to enquire of them whether they considered a confidentiality agreement to have been in place. Moreover, the question of whether such confidentiality agreements represented normal practice could have been addressed by making enquiries of other organisations active in the technical field. The intervener seems not to have followed either of these possible courses of action, or provided any other relevant arguments or evidence, and has therefore not discharged the burden of proof in this respect.

11.4 The board therefore concludes that the public nature of the prior use has not been proven, so that it does not form part of the prior art. The substance of the objections of lack of novelty and lack of inventive step based on the prior use does not therefore need to be addressed.

12. In the light of the above, the board concludes that none of the grounds for opposition raised by the appellant and the intervener prejudices the maintenance of the patent as granted. The main request of the respondent to dismiss the appeal and to reject the opposition of the intervener has therefore to be granted. It was therefore not necessary to discuss the respondent's auxiliary request.