T 0694/19 - Sale of the factory as prior art (?)

Key points

• The OD rejects the opposition. The opponent/appellant argues as follows: "The BAOCAL plant had been made available to the public by means of a sale. The respondent [proprietor] was the customer [buyer] having bought and received the BAOCAL plant from the legal predecessor of the appellant [opponent and was thus in a position to provide evidence on any non-disclosure agreement which might have prevented the public disclosure of the prior use BAOCAL. In the absence of this evidence, it had to be concluded that the prior use BAOCAL was rendered public by its sale to the respondent [proprietor]."
• The Board buys the argument. "According to well-established case law, a single sale is sufficient to render the article sold available to the public within the meaning of Article 54(2) EPC, provided that the buyer was not bound by an obligation to maintain secrecy, even if it is not proved that others also had knowledge of the relevant item (see Case Law of the Boards of Appeal, 10th edition, I.C.3.3.1). If the contracting parties had wanted to exclude the sale and delivery from public accessibility, they would have had to agree on a secrecy obligation."
• "In the present case, it was not shown that the parties to the contract were bound by any obligation to maintain secrecy. In particular, the respondent has not alleged, and there is no evidence on file, that the sales contract[]  comprised a non-disclosure agreement between the parties to the contract. In this context it is observed that the agreement terminating the above-mentioned contract (D1E) does not mention any obligation to keep the particulars of the BAOCAL plant secret in the future either - while several regulations and further obligations of the parties were agreed upon - after the contract had been explicitly terminated in 1993."
"Consequently, the acts of selling and delivering the plant rendered it available to the public. The mere assertion of the respondent that a production hall within which the calcining system is usually located is not open to the public is not sufficient to cast doubt on the public availability of the system sold from one company to the other. The fact that the respondent later decided to file a patent application cannot have an impact on whether or not the system was made public by the sale.
Consequently, in view of the available evidence, it must be concluded that the BAOCAL plant was made publicly available before the priority date and thus forms part of the prior art according to Article 54(2) EPC."
• Preliminary, I think a distinction can be made between the sale of a physical object as such and a business unit. A business unit includes both the tangible assets, the employees, and the IP, including the knowledge of how to operate the plant (with the note that in the absence of any contractual clause, both the seller and the buyer of a business unit would possess such trade secrets). Just as the way that the fact that inventor is free to talk about the invention constitutes no disclosure before he does so, the same principle could apply in the case of the sale of business units. 
• A different situation would be if plant equipment is sold (there is a company selling "second hand" chemical plants on a website, but that refers to a set of equipment, not to up-and-running plants, as I understand it). 
• Note, however, that the Board considers claim 1 to be inventive over the public prior use, so the analysis about the public availability of the plant is, strictly speaking, obiter.
• Comments are welcome!

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t190694eu1

1. Public disclosure of the prior use BAOCAL

1.1 The BAOCAL plant

It is undisputed that a quicklime production plant was built on the premises of the patent proprietor before the priority date. The correspondence of the reference numbers (23361270 - 31067) and the project denomination (BAOCAL) in D1A and D1B satisfies the requirement for proving with a high degree of probability that what was built at the patent proprietor's premises corresponds to the technical content of D1A and D1B.

1.2 Public disclosure of the BAOCAL plant

The respondent argued that a company site did not fall within the scope of the "public sphere", and that employees of the firm could not be considered as members of the public due to their contractual relationship.

However, this is not crucial to the issue at stake.

According to well-established case law, a single sale is sufficient to render the article sold available to the public within the meaning of Article 54(2) EPC, provided that the buyer was not bound by an obligation to maintain secrecy, even if it is not proved that others also had knowledge of the relevant item (see Case Law of the Boards of Appeal, 10th edition, I.C.3.3.1). If the contracting parties had wanted to exclude the sale and delivery from public accessibility, they would have had to agree on a secrecy obligation.

In the present case, it was not shown that the parties to the contract were bound by any obligation to maintain secrecy. In particular, the respondent has not alleged, and there is no evidence on file, that the sales contract (referred to as CGB 87084 in D1E) comprised a non-disclosure agreement between the parties to the contract. In this context it is observed that the agreement terminating the above-mentioned contract (D1E) does not mention any obligation to keep the particulars of the BAOCAL plant secret in the future either - while several regulations and further obligations of the parties were agreed upon - after the contract had been explicitly terminated in 1993.

Consequently, the acts of selling and delivering the plant rendered it available to the public. The mere assertion of the respondent that a production hall within which the calcining system is usually located is not open to the public is not sufficient to cast doubt on the public availability of the system sold from one company to the other. The fact that the respondent later decided to file a patent application cannot have an impact on whether or not the system was made public by the sale.

Consequently, in view of the available evidence, it must be concluded that the BAOCAL plant was made publicly available before the priority date and thus forms part of the prior art according to Article 54(2) EPC.

It is further noted that, in general, each party bears the burden of proof for the facts it alleges. This means that, while it is for the appellant to demonstrate what subject-matter was disclosed by the prior use and that it was made available to the public, it would have been for the respondent to demonstrate that the parties to the contract were under an obligation to maintain secrecy, for example that the parties to the contract had entered into a non-disclosure agreement (see T 2037/18, Reasons 8 and 9). Although the burden of proof may shift to the other party in special circumstances, e.g. if the information is available only to one party but not the other, the present case does not present such circumstances, in particular since both parties to the contract (or their legal successors) are also the parties to the appeal.

2. Inventive step, public prior use BAOCAL as "closest" prior art, Article 56 EPC