T 0956/19 - (II) PhD thesis at library

Key points

•  D35 is : "an inaugural dissertation to obtain a doctorate in medicine from the Johannes Gutenberg University in Mainz, presented to the Faculty of Medicine by [Mr. S] (date of the doctorate February 22, 2005)". The filing date of the patent is 26.04.2005, without priority.
• Quotes in machine translation.
• " Appellants II and III claim, inter alia, that the dissertation D35 was publicly accessible at the DNB locations in Frankfurt am Main and Leipzig before the date of the patent application."
• " In the decision under appeal, the opposition division took the view that document D79 did not prove that document D35 was publicly available because, among other things, it was unclear whether the entry in DNB's central catalog of 29 March 2005 referred to the receipt of a physical copy of the document or whether it was merely based on metadata that the University of Mainz had transmitted to the DNB."
• "In declarations D91 and D99, with reference to the data set reproduced above, it is explained that:

  ...  the field with the reference number 7900 records the date (April 6, 2005) on which a physical copy of the dissertation D35 was placed in the DNB's stacks at the locations in Frankfurt am Main and Leipzig;"

• "Declarations D79, D91 and D99 were made by Mr [K] (D79, D91 and D99), ...). The explanations explain the processes in the DNB and the above data set from the central catalog of the DNB. The declarants themselves were not involved in the inclusion of the dissertation D35 in the central catalog and in the holdings of the DNB. Consequently, these declarations were not made by witnesses in the true sense of the word, since the declarants do not testify on the basis of their own perception. Rather, the statements are statements made as representatives of the DNB. Mr. [K]  made his statements in his function as legal adviser (member of the legal adviser) and thus official representative of the DNB in ​​legal matters."

• "There is no reason to doubt the credibility of the declarants or the credibility of their statements, in particular the correctness of the explanations of the central catalog of the DNB and the receipt, recording and public availability of [the] dissertation at the DNB, to doubt."

• "​​The statement in document D52 that copies of dissertation D35 were placed in the DNB magazines in Frankfurt am Main and Leipzig "circa June 2005" and could be ordered via the catalogue, so that they could be viewed by registered users on request and in extracts could be copied does not justify any doubts as to the credibility of the facts documented by Statements D79, D91 and D99, but rather confirms them. The approximate period of public viewing of physical specimens at the Frankfurt am Main and Leipzig locations mentioned in Document D52 not only remains vague and undetermined, but is ultimately left open. Document D52 therefore does not raise any justified doubts about the corresponding declarations D79, D91 and D99,"

• "After a detailed assessment of the evidence, the Chamber has no doubts that a printed copy of [] Document D35 was sent no later than April 7, 2005 at the DNB locations in Frankfurt am Main and Leipzig via the central catalogue, and could be viewed by users and excerpts copied. In view of the Board's lack of even remote doubts about the above evidence, the standard of proof can be left open."

    As a comment, I note that the Board does not expressly discuss whether the librarian is a member of the public (T 834/09) (" the person in charge of the reception and date stamping of an incoming document at a public library is without any doubt a member of the public – just like the residents of a Copenhagen suburb or the crew working in a ship’s engine room – as this staff member is in no way bound by any obligation to maintain secrecy about the publications he/she handles and the content thereof, and after all, his/her very function as a staff member of a public library is to make information available to the public.") 

• Turning to the substantive issues, an interesting question can be left open: "since Appellant I [patentee]  has not submitted any timely and substantiated submissions regarding the disclosure in relation to the clinical usefulness of document D35, a fundamental prerequisite for a discussion of the case law of the Boards of Appeal on the novelty-damaging nature of uncompleted clinical studies, which include a technical and a legal assessment of established facts and not just an abstract legal question. The opponents have therefore rightly objected that the assertion that document D35 is not detrimental to the novelty of the claimed subject-matter since no clinical benefit is disclosed constitutes a substantial change in Appellant I's submissions. The justification for this change - the claim that document D35 clearly did not destroy novelty - cannot be accepted if only because this view could have been put forward at any stage of the proceedings before the opposition division and during the written appeal proceedings."

•  " Consequently, the subject-matter of claim 1 of auxiliary request 1 is not new within the meaning of Article 54 EPC."

• The examination of the other auxiliary requests (see point IX.) could not be completed, which is why the procedure after a decision on the above partial aspects has to be continued for the points that have not yet been decided."

The Board issues the present interlocutory decision, in five member composition. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t190956du1.html