T 0103/15 - Anonymous experimental report

 Key points

• In this opposition appeal, the opponent is a straw man (admitted). 
• “The opposition division decided not to take the test report D9 ("Rapport d'essais") into account, which the opponent (now appellant) had filed in order to demonstrate that the disclosure of the claimed invention in the patent was insufficient and that the subject-matter of claim 1 was not based on an inventive step. Since the name and qualification of the author of the test report were unknown, the test report was not considered to be sufficiently reliable”
• The Board considers that the OD was right in doing so.
• “with respect to the probative value of test evidence, it is important not only to indicate the conditions under which these tests have been conducted, but also to specify the name of the testers and their employers so that the relationship between the testers and the party can be established if necessary. This also applies in cases where the opponent is acting as a straw man on behalf of a company, because then the relationship between that company and the testers could be a factor in the decision on the probative value of the test evidence filed by the straw man.”
• “Generally, a straw man acting as opponent cannot derive any advantage from their position with regard to the evaluation of the evidence they have submitted. In the present case a neutral institute could have been assigned to perform the tests of document D9. This would have allowed the opponent to provide all necessary information for assessing the probative value of the test results without disclosing the identity of the client on behalf of which the opposition was filed.”
  
  
• Regarding Art.117 in general: “he Enlarged Board of Appeal has recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence (see [G1/12]). Thus, the departments of the EPO have the power to assess whether the alleged facts are sufficiently established on a case-by-case basis. Under the principle of free evaluation of evidence, each piece of evidence is given an appropriate weighting according to its probative value. The deciding body takes its decision on the basis of all evidence available in the proceedings and in the light of its conviction arrived at freely on the evaluation of the submitted evidence.”
  
  
• Regarding the admissibility of documents filed with the Statement of grounds under Art. 12(4) RPBA 2007:
• “In its communication annexed to the summons to oral proceedings, the opposition division did not give a preliminary opinion on novelty or inventive step. Therefore, there was no specific reason apparent for the appellant to present these documents already during the first-instance opposition proceedings. Moreover, the documents represent the common general knowledge relating to thermosets, gelation and curing ...  Generally, the skilled person's common general knowledge has to be considered when assessing inventive step.”
• Hence the documents are admitted.

T 0103/15 

https://www.epo.org/law-practice/case-law-appeals/recent/t150103eu1.html

Reasons for the Decision

1. Non-consideration of document D9 by the opposition division - right to be heard (Article 113(1) EPC 1973)

1.1 The opposition division decided not to take the test report D9 ("Rapport d'essais") into account, which the opponent (now appellant) had filed in order to demonstrate that the disclosure of the claimed invention in the patent was insufficient and that the subject-matter of claim 1 was not based on an inventive step. Since the name and qualification of the author of the test report were unknown, the test report was not considered to be sufficiently reliable (see contested decision, point 3 of the Reasons).

1.2 Neither in the EPC nor in the case law of the boards of appeal are formal rules laid down for the evaluation of evidence. The Enlarged Board of Appeal has recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence (see G 1/12, OJ EPO 2014, A114). Thus, the departments of the EPO have the power to assess whether the alleged facts are sufficiently established on a case-by-case basis. Under the principle of free evaluation of evidence, each piece of evidence is given an appropriate weighting according to its probative value. The deciding body takes its decision on the basis of all evidence available in the proceedings and in the light of its conviction arrived at freely on the evaluation of the submitted evidence.

1.3 In the case in hand, the name and the qualification of the person responsible for performing the tests, drawing conclusions from their results and finally drafting the test report are important elements for assessing the probative value of document D9 in view of the appellant's allegation that the disclosure of the invention in the patent was insufficient and that the subject-matter of claim 1 lacked inventive step.

In accordance with established case law of the boards of appeal, it is naturally essential for comparative tests like the present "rapport d'essais" (D9) to be made under conditions which ensure maximum objectivity on the part of those conducting the tests (Case Law of the Boards of Appeal of the European Patent Office, 9th edition 2019, I.D.10.9 and III.G.4.2.2 a)).

On this issue, decision T 702/99 held that "[t]he use of independent persons would naturally tend to carry more weight but would understandably be more difficult to arrange. While the employment relationship means that the testers cannot be described as independent witnesses, the use of employees may not be objectionable per se as long as the test conditions are designed to ensure that, just as if independent persons were used, the employees are not biased by prior knowledge of either the products under test or of their employer's expectation of the result of their tests. Thus it is always desirable that such tests can be shown to be "blind"; that the testers have had no part in the making of the claimed invention or research leading up to the invention or the patenting procedure; and that the tests have been conducted in the strictest conditions - for example that no-one has given any or all of the testers any advance information, that each tester performs his or her test in the absence of the other testers, and that their opinions are accurately recorded. Since such evidence is opinion evidence and thus inherently subjective, its value lies in the number of similar or same opinions and the tribunal faced with such evidence will naturally be seeking to judge the objective value of a number of subjective opinions" (Reasons for the decision, point 3; see also Headnotes 2 and 3).

It follows from the above that, with respect to the probative value of test evidence, it is important not only to indicate the conditions under which these tests have been conducted, but also to specify the name of the testers and their employers so that the relationship between the testers and the party can be established if necessary. This also applies in cases where the opponent is acting as a straw man on behalf of a company, because then the relationship between that company and the testers could be a factor in the decision on the probative value of the test evidence filed by the straw man.

In view of the above and given the fact that the appellant explicitly refused to disclose information on the author of the test report, the opposition division's doubts regarding the probative value of the test report D9 and its subsequent conclusion not to consider it when deciding on the validity of the patent are not objected to. Contrary to the appellant's view, it is not apparent that the fact that the appellant admittedly acts as a straw man puts it in a worse position compared to an "ordinary" opponent acting in their own name. The importance of indicating the identity and qualification of the author of a test report for judging its probative value does not normally depend on whether the opposition and the subsequent appeal were filed by a straw man. Generally, a straw man acting as opponent cannot derive any advantage from their position with regard to the evaluation of the evidence they have submitted. In the present case a neutral institute could have been assigned to perform the tests of document D9. This would have allowed the opponent to provide all necessary information for assessing the probative value of the test results without disclosing the identity of the client on behalf of which the opposition was filed.

Even though this issue had not been raised in the opposition division's communication, the appellant was given the opportunity to provide the relevant information concerning the authorship of the test report D9 during the oral proceedings, which it refused (see minutes, bottom of page 1, and contested decision, point 3 of the Reasons). Since the opposition division additionally indicated the implications of this refusal for its conclusion on the probative value of document D9 (see minutes, bottom of page 1), the appellant's right to be heard was not violated concerning this issue.

1.4 Finally, the reasons for not considering document D9 during the first-instance opposition proceedings still apply at the appeal stage. Therefore, in view of its limited probative value, this document is not taken into account by the board when reviewing the opposition division's decision.

2. Admittance of documents D13 to D19

2.1 Documents D13 to D19 were filed with the statement of grounds of appeal as a basis for technical explanations and as evidence for the common general knowledge. In the present case, the statement of grounds of appeal was filed before the date on which the revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) entered into force, i.e. 1 January 2020 (see Article 24(1) RPBA 2020). Hence, in accordance with Article 25(2) RPBA 2020, Article 12(4) to (6) RPBA 2020 does not apply. Instead, Article 12(4) of the Rules of Procedure of the Boards of Appeal in the version of 2007 (RPBA 2007 - see OJ EPO 2007, 536, and EPC, 16th edition, June 2016, pages 601 to 629) continues to apply.

2.2 According to Article 12(4) RPBA 2007, everything presented by the parties under Article 12(1) RPBA 2007 has to be taken into account by the board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA 2007. However, the board has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.

2.3 Applying these provisions to the present case, it has to be examined whether documents D13 to D19 could (and should) have been filed during the first-instance proceedings.

In its communication annexed to the summons to oral proceedings, the opposition division did not give a preliminary opinion on novelty or inventive step. Therefore, there was no specific reason apparent for the appellant to present these documents already during the first-instance opposition proceedings. Moreover, the documents represent the common general knowledge relating to thermosets, gelation and curing (documents D13, D15 to D17), with respect to crimped fibers (document D18) and the melting point of polyamide fibers (document D19). Generally, the skilled person's common general knowledge has to be considered when assessing inventive step.

2.4 Therefore, the board has no power under Article 12(4) RPBA 2007 to hold documents D13 to D19 inadmissible. Since the requirements of Article 12(2) RPBA 2007 are met, the board takes documents D13 to D19 into account in accordance with Article 12(4) RPBA 2007.