T 1841/18 - A visit of a factory as prior art

Key points

• "Both parties agree that Mr. G. inspected a machine supplied by the patent proprietor during a visit to Caffitaly before the filing date of the patent in suit."
• This is asserted as a public prior use.
• "The opposition division decided, after having heard Mr. G. as a witness [see the minutes], that the above mentioned inspection did not amount to a disclosure of the inspected machine because the circumstances of the inspection implied the existence of an obligation to maintain secrecy."
• There was a confidiality agreement between Caffitaly and GIMA. GIMA was the parent company of IMA, and IMA is the employer of Mr. G.
• "Mr. G. during the inspection, acted in the best interests of GIMA and IMA, which was to keep the observed technical information confidential", according to the OD.
• "there is no evidence on file of the existence of a non-disclosure agreement directly involving IMA at the time of the inspection because the non-disclosure agreement contained in D1m was signed by GIMA and Caffitaly"
• "Mr. G.was therefore not directly bound by these contractual obligations, irrespective of the extent thereof"
• "Document D1r, ... only shows that IMA owned 65% of the shares of GIMA."
• "the transfer to IMA of the totality of the [GIMA's] business assets was only finalized after the inspection, and there is nothing in D1r supporting the patent proprietor's allegation that when IMA acquired a controlling majority of the shares of GIMA (65%, see D1r), also these specific secrecy obligations were taken over."
• " the witness [Mr. G.] explicitly confirmed that he was not aware of any confidentiality obligation during the inspection (page 8, second paragraph of the minutes of the taking of evidence), and that at that time GIMA was a competitor of IMA" 
• " the opponent convincingly demonstrated that the assumption, at the basis of the appealed decision, that Mr. G. was not a member of the public, is unjustified. 
• As a consequence of the above, the opponent also convincingly demonstrated that the inspected machine (see D1e) was made available to the public, and is therefore prior art."
• The patent is revoked.
• I note that the Board also mentions that  "Caffitaly signed a non-disclosure agreement with the patent proprietor" and that "the patent proprietor [submitted documents] to show that the sale of the allegedly disclosed machine was made under secrecy".
• The visit was on 25.08.2010. The patent's filing date was more than six months later, on 16.03.2011. Article 55 is, therefore, of no avail.
• The declaration of Mr. G. does not seem to explain why he visited the site and, especially, why he was granted access.
• As a comment, however, without checking the complete file, there appears to be no evidence on record from Caffitaly confirming that they granted Mr. G. access to their site without expecting any confidentiality and giving any explanations of why they did so. The OD notes in its decision that Mr. G stated that "he was not aware of the specific details regarding the organisation of the visit as it had been organised by Mr. T.". Mr. T. also was present during the visit but gave no witness testimony.  
• I find the Board's decision remarkable. However, courtesy obliges me to comment no further here.
• There is also an issue of the effect of a national court's judgement on the matter discussed in the decision.
• Note, there is also a case T 1814/18 that is closely related. 
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• EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t181841eu1.html