T 1808/21 - Joint development cooperation

Key points

•  "The appellants [opponents] argued that the opposition division erred in its finding of point 4.5.19 of the reasons for the decision under appeal that document D17 did not form part of the prior art in the sense of Article 54(2) EPC."
• "D17 contains an email from Mr Hjorteland of Jakob Hatteland Computer AS to a recipient at the company EVS. "
• "The appellants [opponents] rely in the fact that, due to the lack of a written non-disclosure agreement and within the framework of Russian law, EVS could have been in place of disseminating the content of D17, but not that this actually happened."
•  "The Board is in full agreement with the opposition division [] that an email is not accessible to the general public unless it is forwarded to third parties. This finding has not been disputed by the parties. In the present case it is furthermore uncontested, or at least there is no evidence that could constitute proof of the contrary, that the content of D17 was not further disseminated after the email was sent from Mr Hjorteland to EVS."
• "the decisive matter to be established is whether EVS itself is to be considered as part of the public under Article 54(2) EPC or not."
• I think the focus on email should not distract us, the principle would be the same for a paper letter or a phone call.
•  the Board is convinced that the sender (Jakob Hatteland Computer AS) and the recipient (EVS) of the email D17 were not under a mere commercial relationship to sell or purchase a pre-existing product, and rather concurs with the respondent [proprietor] that both companies had immersed themselves in the development of a new product. This is confirmed at multiple passages of the email, which details inter alia that a new robot must be designed (different than the one available), that a new gripper had to be designed and that new columns of the grid system needed to be developed. The email also provides details of what is included in the "development cost"."
• "it is established case law at the EPO that a cooperation between two parties, in particular to develop a product (in the present case a new robot design and a new grid design), has as a final consequence that the participants in the development and/or the donors or recipients of information linked to such development cannot be treated as members of the public for the purpose of Article 54 EPC"
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t211808eu1.html

4.3 Documents D26 and D27 - Admittance, Article 13(1) RPBA 2020

4.3.1 Appellants 2 and 3 submitted on 19 May 2022 (i.e. after the filing of their respective statements of grounds of appeal) document D26, consisting of presentation slides dated 29 September 2011 given by Hatteland Computer (AutoStore) to EVS and the CBR (Central Bank of Russia, which was the final client) and document D27, which is a compilation of alleged facts surrounding the case.

4.3.2 The filing of D26 and D27 is an amendment to the appellants' cases and its admittance is subject to Article 13(1) RPBA 2020, according to which any amendment to a party's appeal case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The amendment is subject to the parties' justification and may be admitted only at the discretion of the Board.

4.3.3 The respondent requested that documents D26 and D27 not be admitted into the appeal proceedings. In the respondent's view, the appellants could have filed the evidence at an earlier stage. Moreover, the admittance of D26 would lead to a new assessment of whether its content had been made publicly available, which is detrimental to the procedural economy. In addition, the alleged facts listed in D27 are challenged by the by the respondent.

4.3.4 According to all appellants, the content of the presentation of D26 was to be considered as part of the prior art in the sense of Article 54(2) EPC and as anticipating the subject-matter of claim 1 as granted, therefore prima facie relevant. The admission of these documents would have no impact in the procedural economy, since they were already known by the respondent as being subject of the parallel pending UK trial.

The appellants also argued that the presentation slides of D26 and the summary of material facts D27 describing the relationship between Autostore, EVS and the CBR had been filed at earliest stage possible, because this evidence had not yet been referred to at trial in the English proceedings. The possibility to rely on material that was referred to in open court and that was not designated confidential by the patent proprietor arose only once the UK trial finished, namely on 12 April 2022.

4.3.5 The Board is not convinced by the reasons provided by the appellants for the late filing of D26 and D27.

As correctly indicated by the respondent, the appellants could have sought to release evidence for earlier submission at the EPO, either by seeking consent of the patent proprietor or by getting permission from the English court, as the appellants indeed did for document D17 in opposition proceedings.

In view of this, the Board is convinced that there were no legal obstacles, but just procedural formalities in order to release the evidence D26 and D27 and that it was rather the choice of the appellants not to submit these documents at least with their statement setting out the grounds of appeal, if not even at an earlier stage.

4.3.6 In this light, the Board, following the respondent's request and exercising its discretion under Article 13(1) RPBA 2020, does not admit documents D26 and D27 into the appeal proceedings.