T 0733/23 - There is only one standard of proof

Key points

• "A number of decisions suggest that different standards of proof should be applied when assessing the public availability of evidence, depending on whether the relevant documents are within the exclusive sphere of one of the parties or equally accessible to all parties. When the evidence is exclusively within the control of one of the parties, the Boards have generally deemed it appropriate to apply the 'up-to-the-hilt' or 'beyond reasonable doubt' standard. Conversely, when both parties have equal access to the evidence, the lower standard of 'balance of probabilities' has normally been applied."
• "The present board concurs with the position in decision T 1138/20 (see Reasons 1.2.1) that there is only one standard of proof: the deciding body must be convinced, based on the underlying circumstances, that the relevant subject-matter was made available to the public before the priority or filing date of the patent."
• "This does not imply that all cases are treated identically, as in practice the degree of proof required to establish credibility (i.e. to persuade the board that the evidence was made available to the public before the filing/priority date) may vary depending on the specific circumstances of each case. In other words, it is not the standard of proof that adjusts with the circumstances, but rather the credibility of the arguments made by the different parties."
• "For example, when the evidence is exclusively controlled by one party, any gaps in the relevant information may significantly undermine that party's credibility, as such omissions may suggest that evidence has been purposefully withheld, that books were not well kept or that no significant efforts were made to come up with such evidence - all factors that speak against the credibility of the party meant to come up with such evidence. Conversely, when the information is equally accessible to both parties but only one party submits evidence, merely raising doubts may not be sufficient to challenge the credibility of that information. In such cases, it can usually be assumed that if the other party had found information supporting its position, it would have submitted it."
• " In the present case, the conclusions of the opposition division suggest that the standard of proof 'up-to-the-hilt' was applied to determine the public availability of the data sheets. Even if the board agreed that different standards should be applied, this would not be justified in the present case, as the relevant information to prove the public availability of the data sheets was not within the exclusive sphere of the appellant."
• I.e., the approach of the OD was incorrect in the first place.
• " In fact, it could be argued that in the present case, the relevant information would more likely be within the sphere of the patentee, since after acquiring the company that issued these data sheets, it may have gained access to any information concerning the data sheets and/or the commercialisation of the relevant products. In any case, even if the patentee had no access to additional relevant information in this regard, the evidence would still be equally accessible to both parties. Therefore, there is no basis for applying the strict standard of 'up-to-the-hilt' or, following the position in this decision, for questioning the credibility of the appellant solely on the grounds that some information is missing."
• "It is also noted that at the oral hearing, the patentee advanced the argument that when in doubt about the conclusiveness of the evidence, the patent should be upheld. The board finds this wrong on two counts:"
• The first point relates to the remark in the UK case House of Lords, Re B (Children) [2008] UKHL 35, that "[t]here is no room for a finding that it might have happened" (under English law). See my post here.
• "Second, there is no presumption of patent validity in proceedings meant to re-assess the validity of this very patent. Different from re-assessing a discretionary decision, the question of patentability must be assessed de novo in opposition or appeal proceedings. While there is a presumption of validity in all legal acts where the patent's validity is not challenged, where it is challenged, the assessing body must undertake an examination of validity no different from the one in examination. Therefore, in opposition and appeal proceedings, there is no room for the rule "when in doubt, the patent should be upheld." This is also correct on a macro-economic level: Patents are a (recognised) encumbrance and exception to free trade and such needs justification in that a body entrusted with the substantive examination of patent applications must ascertain the requirements of patentability. The European Patent Office thereby acts as a Portcullis to separate the weed from the chaff and to grant only those patents that fulfil the requirements as established by the EPC."
• The legal member of the Board was Mr Heath. 
• At the outset: I think the burden of proof is on the opponent to establish the alleged facts (cf. T1076/21, see below). Still, a close reading of the paragraph.
• " there is no presumption of patent validity in proceedings meant to re-assess the validity of this very patent. Different from re-assessing a discretionary decision [G7/93 r.2.6] the question of patentability must be assessed de novo in opposition or appeal proceedings. [Note, on a procedural level, the situation in opposition and appeal may differ under Art. 12 RPBA, but fundamentally the standard of review in opposition appeal is indeed not deferential]
  While there is a presumption of validity in all legal acts where the patent's validity is not challenged [German-style bifurcated infringement proceedings?], where it is challenged, the assessing body must undertake an examination of validity no different from the one in examination [some literature references would be helpful here - cf. “A patent shall be presumed valid.” 35 U.S.C. § 282, see also e.g. Microsoft Corp. v. i4i Limited Partnership, 564 U.S. 91 (2010) ].
  Therefore, in opposition and appeal proceedings, there is no room for the rule "when in doubt, the patent should be upheld." 
• compare:  T 72/04, point 3 (in a case where the parties make contradictory but unsubstantiated assertions concerning facts relevant for establishing patentability and the EPO is not in a position to establish the facts of its own motion, the benefit of the doubt is given to the patent proprietor); 
• see also T 1076/21: "After the grant of the patent, i.e. after the end of the examination proceedings, a legal presumption exists that the patent meets the requirements of the EPC. " - I note that the case was about sufficiency and that sufficiency attacks and new novelty attacks can probably be distinguished.
• And, of course, G 10/91, point 18 of the reasons: "This approach also reduces the procedural uncertainty for patentees having otherwise to face unforeseeable complications at a very late stage of the proceedings, putting at risk the revocation of the patent, which means an irrevocable loss of rights. Opponents are in this respect in a better position, having always the possibility to initiate revocation proceedings before national courts, if they do not succeed before the EPO."
• This is also correct on a macro-economic level: Patents are a (recognised) encumbrance and exception to free trade [,] and such [encumbrance] needs justification in that a body entrusted with the substantive examination of patent applications must ascertain the requirements of patentability. The European Patent Office thereby acts as a Portcullis [a strong gate above an entrance to a castle and used to be lowered to the ground in order to keep out enemies - link] to separate the weed from the chaff and to grant only those patents that fulfil the requirements as established by the EPC."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230733eu1