T 0606/22 - Factory visit as (no) public prior use

Key points

• The alleged public prior use is a visit of a person to a plant.
• The Board, in machine translation: "In the present case, all evidence relating to the alleged obvious prior use was within the sphere of influence of the [former] opponent, who relied on a video made during a visit by one of its employees, the witness Mr. Traum, to Sante A. Kowalski Sp.j. The obviousness of the prior use therefore had to be proven without gaps by the opponent"
• The opponent had withdrawn the opposition in appeal before the summons. The proprietor and the opponent had both appealed the decision to maintain the patent in amended form. 
• "The opposition division based its finding on the obviousness of the prior use on the testimony of the witness Mr. Traum. In his testimony, the witness stated that during the visit to the Sante A. Kowalski Sp.j. premises on which the prior use was based, he was under no obligation with regard to what he had seen in the premises (see the minutes of the taking of evidence, page 2, last full paragraph). He further stated that he was not prevented from taking video recordings on the premises. He stated that he could not remember any instructions regarding confidentiality (see ibid., page 5, paragraphs 2 and 3). In addition, the witness stated that he had to sign at the access control to comply with hygiene and safety regulations (see ibid., page 2, paragraph 5)."
• "In its written submission of 3 June 2022, the patent proprietor submitted, through document A38, two versions of a "Guest Statement" from Sante A. Kowalski Sp.j., which are essentially identical with regard to points 3 and 9 on confidentiality, and which it claims had to be signed by every visitor to the premises of Sante A. Kowalski Sp.j. during the relevant period of the alleged prior public use.
• "2.5 Both "Guest Statements" appear to be consistent with the witness's statement regarding the access control in place during his visit to Sante A. Kowalski Sp.j. and the obligation of visitors to sign a declaration.
• 2.6 However, contrary to the vague statement of the witness, document A38 contains explicit provisions on confidentiality and a prohibition on video recordings on the premises without the consent of Sante A. Kowalski Sp.j. 

• "the submission of document A38 raises considerable doubts about the opposition division's finding that Sante A. Kowalski Sp.j. had no interest in confidentiality. Rather, confidentiality for visitors appears to have been standard practice. It is not apparent that an exception was made for certain groups of visitors, such as service technicians. The witness also only mentions access control in general terms.

  2.8 These doubts can no longer be verified in the present proceedings, since further investigations to clarify the facts necessarily require the cooperation of the opponent, given its influence over the evidence, who has, however, withdrawn its opposition. The board therefore concludes that, following the submission of document A38, there are sufficiently justified doubts as to the obviousness of the prior use (see T 1534/16, in particular point 1 of the reasons). "

• The opponent had withdrawn the opposition in 2024.

• The Board considers the public prior use to be not proven. 

• :" In its preliminary opinion of 2 August 2019 and 23 June 2020, the opposition division came to the preliminary view that, with the exception of the asserted obvious prior use, all objections raised up to that point in time were unlikely to be successful under the ground of opposition under Article 100(a) EPC. The novelty objection based on D15 was not admitted into the proceedings due to a lack of prima facie relevance. With regard to the objections newly filed with the written submissions in the appeal proceedings, in particular public prior use IV, the board sees no reason why these should be admitted into the proceedings.

  The Board therefore sees no reason to remit the case to the Opposition Division for continuation of the opposition proceedings under Rule 84(2) EPC.

  4. Accordingly, there are no grounds for opposition under Article 100 EPC which would manifestly preclude the maintenance of the patent in its granted form. "

• The patent is maintained as granted.

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t220606du1

2. Novelty of claim 1 according to the main request over the alleged public prior use OV1 (Article 100(a) and 54 EPC)

2.1 The patent proprietor contested the finding in point II.2.2 of the reasons for the decision that the prior use OV1 is to be regarded as publicly available.

2.2 The opposition division based its finding on the obviousness of the prior use on the testimony of the witness Mr. Traum. In his testimony, the witness stated that during the visit to the Sante A. Kowalski Sp.j. premises on which the prior use was based, he was under no obligation with regard to what he had seen in the premises (see the minutes of the taking of evidence, page 2, last full paragraph). He further stated that he was not prevented from taking video recordings in the premises. He stated that he could not remember any instructions regarding confidentiality (see ibid., page 5, paragraphs 2 and 3). In addition, the witness stated that he had to sign at the access control to comply with hygiene and safety regulations (see ibid., page 2, paragraph 5).

2.3 In the present case, all evidence relating to the alleged obvious prior use was within the sphere of influence of the then opponent, who relied on a video made during a visit by one of its employees, the witness Mr. Traum, to Sante A. Kowalski Sp.j. The obviousness of the prior use therefore had to be proven without gaps by the opponent in accordance with the regular case law of the Boards of Appeal (see Case Law of the Boards of Appeal [RdB], 10th edition 2022, III.G.4.3.2.b)).

2.4 In its written submission of 3 June 2022, the patent proprietor submitted, through document A38, two versions of a "Guest Statement" from Sante A. Kowalski Sp.j., which are essentially identical with regard to points 3 and 9 on confidentiality, and which it claims had to be signed by every visitor to the premises of Sante A. Kowalski Sp.j. during the relevant period of the alleged prior public use.

2.5 Both "Guest Statements" appear to be consistent with the witness's statement regarding the access control in place during his visit to Sante A. Kowalski Sp.j. and the obligation of visitors to sign a declaration.

2.6 However, contrary to the vague statement of the witness, document A38 contains explicit provisions on confidentiality and a prohibition on video recordings on the premises without the consent of Sante A. Kowalski Sp.j.

2.7 Even if it has not been proven that the witness signed one of the declarations in document A38 and not another document when entering the company premises and whether, in the event that he signed a declaration in accordance with document A38, consent to the making of the video recordings was not given, the submission of document A38 raises considerable doubts about the opposition division's finding that Sante A. Kowalski Sp.j. had no interest in confidentiality. Rather, confidentiality for visitors appears to have been standard practice. It is not apparent that an exception was made for certain groups of visitors, such as service technicians. The witness also only mentions access control in general terms.

2.8 These doubts can no longer be verified in the present proceedings, since further investigations to clarify the facts necessarily require the cooperation of the opponent, given its influence over the evidence, who has, however, withdrawn its opposition. The board therefore concludes that, following the submission of document A38, there are sufficiently justified doubts as to the obviousness of the prior use (see T 1534/16, in particular point 1 of the reasons).

2.9 However, in the absence of conclusive evidence of the obviousness of the prior use, the opposition division's findings regarding the lack of novelty of the subject-matter of claim 1 according to the main request in relation to the obvious prior use asserted do not stand up to scrutiny.

2.10 The contested decision must be annulled.