T 0143/24 - (II) Sold product as prior art

Key points

• For some reason, I've found a second post about this decision in my stock. This second post has a slightly different angle. I decided to publish it as well. 
• The opponent alleges a public prior use, based on the sale of a polymer. The polymer sold was not reproducible.
• The Board, in translation: "If prior public use is claimed to be the sale of an item and its delivery to a customer, the recognizable features of the item sold generally become publicly accessible if the item is transferred without a confidentiality agreement and can be analyzed by a person skilled in the art. Contrary to the patent proprietor's view, reproducibility is not necessary for a product that is freely accessible and analyzable on the market to be considered prior art under Article 54(2) EPC (G 1/23, Reasons 73, 74)."
• As a comment, I think that for novelty, the product is prior art for all its properties, even those that cannot be measured. If you invent a new device that is able to measure a newly-developed property and carry out the measurements on known materials (say, water, graphene), a claim defining that material in terms of the new property is not novel, in my view. The exception for second medical use claims (drafted as product claims under EPC2000) in fact confirms the rule. 
•  "However, free access on the market is lacking if the product is sold subject to confidentiality agreements. "
• I think we have to be precise about what we mean by 'confidentiality'. Linguistically, confidentiality refers to information, and a physical product is not information. Do we mean a non-analysis clause? A clause that the sold product (e.g., apparatus) may not leave the premises of the buyer? Should the sold apparatus be hidden from visitors' view? 
• In this case, the documents submitted by the opponent regarding the sale indicate that the general terms and conditions of the seller applied. The opponent was the seller. 
• The Board: "In the present case, the opponent has neither submitted the terms and conditions mentioned in the contract documents it has provided, nor has it presented specific details regarding their concrete content or individual agreements relating to the respective sales. In such a case, the opponent cannot generally evade its burden of proof by merely asserting in general terms that no confidentiality agreement was concluded between the contracting parties. It is also not possible to deny the opposing party's statements on this matter with mere lack of knowledge, as this would only be permissible if the patent holder were subject to the burden of proof."
• "Confidentiality agreements are frequently included in so-called "General Terms and Conditions," the content of which is not individually negotiated for each legal transaction but pre-formulated for an indefinite number of cases. At least when the public accessibility of a product is based on a sales transaction which—as in this case—was based on general terms and conditions, according to the appellant's submissions and the documents presented, the appellant [opponent ] must therefore generally also present information on the content of these general terms and conditions in order to meet its burden of proof."
• The proprietor had submitted the general terms and conditions of the same seller (from a different transaction). These read as follows: "12. - Confidentiality
  All technical, commercial, economic, or other information or data relating to the supplier's business, including but not limited to its formulas, product specifications, services, plans, programs, processes, products, costs, operations, and customers, which the buyer, its affiliates, officers, or employees become aware of in the performance of the contract, shall be treated as the supplier's confidential property, and the buyer is obligated not to use such information or data unless it benefits the supplier in the performance of the contract, and the buyer may only use such information or data for the benefit of the supplier in the performance of the contract." 
• It may require careful analysis to determine whether this clause prohibits the buyer from analysing the product after the buyer has paid and performed under the contract.
• More generally, I wonder if the Board's focus on confidentiality is consistent with G 1/23. If the seller is willing to sell the product to anybody upon payment of the price and (tacit) acceptance of the general terms and conditions, 
• 
  

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t240143du1