T 2398/12 - Prototype lost with EPO

Key points

• " In the impugned decision, the opposition division held, inter alia, that the subject-matter of claim 1 was new and involved an inventive step with respect to an alleged prior use at the CeBIT trade fair 2001 referred to as D1. Evidence for the prior use was provided inter alia by a model inspected at the oral proceedings before the opposition division and a video, referred to as D14, of a television program covering the trade fair. The opposition division accepted that the model was the computer mouse shown in D14." 
• " The board [in the appeal] requested that it be provided with the model [i.e. the prototype shown at the oral proceedings before the OD]. EPO records from the post room show that a package did arrive by post at the EPO, including a letter from the appellant listing the items said to be enclosed. However, neither the model nor the other items ever arrived within the Boards of Appeal Unit, a separate department located in another building.

• VI. In a communication accompanying a summons to attend oral proceedings, the board drew attention to the missing items, which, despite an internal investigation, had not been found at the EPO. The board stated that, as regards the model, the board was limited to the facts established by the opposition division as a result of their taking of evidence (cf. the minutes of the oral proceedings before the opposition division) and any observations by the board which could be unequivocally deduced from the video showing the model (i.e. D14).
• " It was accepted by the opposition division that the prototype of a computer mouse which the appellant presented at the oral proceedings before the opposition division (to be referred to as "the model") corresponded to the one exhibited at the CeBIT trade fair 2001, as shown in the video D14. The allegation of a public prior use referred to as D1 and assessed by the opposition division is essentially based on this model. The model however is not available for assessment by the board (see points V and VI above).

• 1.5 Although this is obviously highly regrettable, not least in respect of the examination of the appeal, the board considers that what actually happened to the missing items is primarily a matter between the appellant and the EPO departments which handle the incoming mail rather than the board. The board's task is to decide on the merits of the appeal on the basis of the requests, facts, evidence and arguments available to it." 

EPO T 2398/12  - link

Summary of Facts and Submissions

I. This case concerns the appeal of the opponent (henceforth, appellant) against the decision of the opposition division rejecting its opposition against the European patent No. 1 615 096.

The patent proprietor is respondent.

II. The patent had been opposed on the ground for opposition pursuant to Article 100(a) EPC (lack of novelty and lack of inventive step). In the impugned decision, the opposition division held, inter alia, that the subject-matter of claim 1 was new and involved an inventive step with respect to an alleged prior use at the CeBIT trade fair 2001 referred to as D1. Evidence for the prior use was provided inter alia by a model inspected at the oral proceedings before the opposition division and a video, referred to as D14, of a television program covering the trade fair. The opposition division accepted that the model was the computer mouse shown in D14.

Reasons for the Decision

1.4 It was accepted by the opposition division that the prototype of a computer mouse which the appellant presented at the oral proceedings before the opposition division (to be referred to as "the model") corresponded to the one exhibited at the CeBIT trade fair 2001, as shown in the video D14. The allegation of a public prior use referred to as D1 and assessed by the opposition division is essentially based on this model. The model however is not available for assessment by the board (see points V and VI above).

1.5 Although this is obviously highly regrettable, not least in respect of the examination of the appeal, the board considers that what actually happened to the missing items is primarily a matter between the appellant and the EPO departments which handle the incoming mail rather than the board. The board's task is to decide on the merits of the appeal on the basis of the requests, facts, evidence and arguments available to it.

1.6 As regards the prior use D1, the board is limited to taking into account the facts and conclusions established by the opposition division as a result of the "taking of evidence" (cf. the minutes of the oral proceedings before the opposition division) and any observations by the board which can be unequivocally deduced from the video showing the model (i.e. D14).

1.7 The appellant requested to be able to introduce into the proceedings a second model alleged to conform in all essential aspects to the first model. However, the board found this to be not necessary. On the one hand it would be difficult to be convinced that the second model were structurally and functionally identical to the model exhibited at the CeBIT 2001 and shown in the video D14 in all aspects relevant to the decision, especially as far as the interplay between the grip element, the bellows, and the recess were concerned. On the other hand, the board notes that the opposition division has already performed a visual and tactile inspection (cf. minutes of the oral proceedings, point 8.1) of the model and came to the conclusion, inter alia, that the bellows cover made it impossible to determine whether the grip element extended into the recess or not (feature i) and that it was not possible to determine whether the centre of the pivot was inside the recess (feature i.1). A full review of the evaluation of the evidence undertaken by the opposition division does not have to be undertaken unless the evaluation shows apparent flaws such as errors of logic and the like (see e.g. T 2565/11, point 1.2.1 of the reasons). Although the appellant has alleged that the opposition division did not base its decision on a tactile examination in addition to a visual examination, which might be considered as an error, the board finds this to be rather implausible, especially as the minutes explicitly state that a tactile examination was performed. Consequently, the board has no reason to doubt the conclusions of opposition division derived from the inspection of the model (see also point 1.12.1 ff. below).