T 1589/13 - Rules of evidence and burden of proof

Key points

• In this opposition appeal case, the Board confirms that also for internet disclosures, " standard of proof is generally the balance of probabilities". " By way of exception, the standard of proof may be more stringent, for example in opposition (appeal) proceedings where only one party, usually the opponent, has access to information, e.g. concerning an alleged public prior use. The difficulty of the other party to gain access to information concerning such public prior use, and if they are the proprietor, of proving a negative, has caused the case law to tend in this case toward expecting the public prior use to be proved beyond reasonable doubt".
• The Board also explains the shifting of the burden of proof. " The burden of proof generally lies with the one who affirms. In the specific case of the documents E1, E2 and E4, the burden of proof thus rested with the (former) opponent. If the opposition division or the board, however, is satisfied that, on the balance of probabilities, these citations constitute prior art, it is then up to the appellant/patent proprietor to prove otherwise." .
• About the publication date of brochures: " In view of their nature as advertising brochures (see in particular the last sentence of the disclaimer on the last page of documents E1 and E4) and of the fact that the priority date is 1.5 to 5.5 years after the alleged creation dates, it can be presumed that these brochures have been made available to interested circles, without any obligation to keep them secret, in the months following the dates indicated on the cover, which is clearly before the date of priority of the contested patent" (E1 and E4 are also internet publications). 
• About admissibility of the main request under Article 12(4) RPBA: " document E7, which the opposition division finally found decisive for refusing auxiliary request 7 and revoking the patent, was submitted only one month before the date of the first-instance oral proceedings. In view of the above, the board does not see any reason why the patent proprietor should have filed the present main request already during the first-instance proceedings" 

EPO T 1589/13 - link

Reasons for the Decision

1. Prior art status of documents E1, E2 and E4

1.1 While it is not generally disputed that documents E1, E2 and E4 are publications by DIAB, it is contentious whether these documents were made available to the public before the priority date and thereby meet the criterion for forming part of the state of the art under Article 54(2) EPC. As to the required level of proof, the appellant relies on decisions T 1134/06 and T 1875/06, according to which it had to be established beyond reasonable doubt that an alleged publication on the Internet was in fact made available to the public before the relevant date.

1.2 On this issue, the board notes that the jurisprudence of the boards of appeal did not generally follow the findings in decisions T 1134/06 and T 1875/06 that the standard of proof for Internet publications should be higher than for prior art in general. Rather, it was repeatedly confirmed that the EPO standard of proof is generally the balance of probabilities (see for example decision T 2227/11, cf. Case Law of the Boards of Appeal of the EPO, 8th edition 2016, III.G.4.3.1). By way of exception, the standard of proof may be more stringent, for example in opposition (appeal) proceedings where only one party, usually the opponent, has access to information, e.g. concerning an alleged public prior use. The difficulty of the other party to gain access to information concerning such public prior use, and if they are the proprietor, of proving a negative, 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, 8th edition 2016, III.G.4.3.2).

However, in the specific case of documents E1, E2 and E4, which were all produced by a third party, the patent proprietor and the (former) opponent both potentially had equal access to the relevant information, notably concerning the authenticity of their publication dates and their content. Accordingly, the board sees no reason to deviate from the standard of proof of balance of probabilities.

1.3 Moreover, the burden of proof generally lies with the one who affirms. In the specific case of the documents E1, E2 and E4, the burden of proof thus rested with the (former) opponent. If the opposition division or the board, however, is satisfied that, on the balance of probabilities, these citations constitute prior art, it is then up to the appellant/patent proprietor to prove otherwise.

1.4 In that respect, it is observed that documents E1, E2 and E4 are advertising brochures which apparently contain respective creation dates (E1: "Rev C 11.19.02", E2: "9.10.01", E4: "05.12." and "© 2006"). In view of their nature as advertising brochures (see in particular the last sentence of the disclaimer on the last page of documents E1 and E4) and of the fact that the priority date is 1.5 to 5.5 years after the alleged creation dates, it can be presumed that these brochures have been made available to interested circles, without any obligation to keep them secret, in the months following the dates indicated on the cover, which is clearly before the date of priority of the contested patent. This presumption is supported by the affidavit E8 and the invoice E9 for printing document E4. Although the appellant expresses doubts regarding the different formats used for the date stamping on the documents, regarding the question of whether the documents remained unaltered after the date stamping and as to the value of the affidavit E8, these submissions are not supported by conclusively presented facts. Consequently, they are less convincing.

1.5 In view of the above and on the balance of probabilities, the board sees no reason to overrule the opposition division's decision acknowledging the prior art status of documents E1, E2 and E4. Consequently, these documents belong to the state of the art according to Article 54(2) EPC.

2. Admissibility of document E7

2.1 The opposition division decided to admit document E7 into the proceedings in view of its prima facie relevance (cf. impugned decision, Reasons 12). It is not apparent that the opposition division exercised its discretion under Article 114(2) EPC according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (cf. G 7/93, OJ EPO 1994, 775). Consequently, the admission of document E7 into the opposition proceedings is not to be objected to. This is all the more true in view of the principle of ex-officio examination under Article 114(1) EPC. According to this provision, the opposition division examines the facts of its own motion, as an administrative instance and in accordance with the extent of the opposition under Rule 76(2)(c) EPC (cf. G 9/91, OJ EPO 1993, 408, Reasons 10). In doing so, it is not restricted to the facts, evidence and arguments provided by the parties.

2.2 The board additionally observes that the framework of the European Patent Convention does not provide a legal basis for excluding, at the appeal stage, a prior art document which was correctly admitted into the first-instance proceedings. It has to be emphasised that it is the primary function of an appeal to give the losing party the possibility of having the correctness of the first-instance decision judicially reviewed. In the case at hand, the impugned decision deals, inter alia, with the issues of novelty and inventive step in view of prior art document E7. The correctness of these findings cannot be reviewed without taking into consideration the teaching of this document.

For these reasons, document E7 forms part of the present appeal proceedings.

3. Main request - admissibility

3.1 The present main request was filed as auxiliary request 8 together with the appellant's statement setting out the grounds of appeal, allegedly in order to overcome specific objections raised by the opposition division during the oral proceedings against the auxiliary requests then on file.

3.2 Regarding the issue of its admissibility, it is observed that under Article 12(1) and (4) RPBA, the board has to take into account everything presented by the parties, inter alia in the notice of appeal, the statement of grounds of appeal and any written reply of the other party or parties, if and to the extent that it relates to the case under appeal and meets the requirements set out in Article 12(2) RPBA. The board, however, has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.

3.3 Turning to the opposition proceedings of the case at hand, it is observed that in its preliminary assessment, the opposition division had considered that documents E1, E2 and E4 did not form part of the state of the art and that the opposition could therefore be "inadmissible". Moreover, document E7, which the opposition division finally found decisive for refusing auxiliary request 7 and revoking the patent, was submitted only one month before the date of the first-instance oral proceedings. In view of the above, the board does not see any reason why the patent proprietor should have filed the present main request already during the first-instance proceedings. Rather, this request constitutes an appropriate reaction to the impugned decision. It is therefore admitted into the appeal proceedings under Article 12(4) RPBA.