T 0143/24 - Interpreting G 1/23

Key points

• The opponent alleges three prior uses. The prior uses concern sales by companies within the Ashland Group. Furthermore, the opponent also belongs to that group of companies. Hence, it is an alleged public prior use in the opponent's own sphere.  
• The Board, in machine translation: The Board considers that the opponent has not demonstrated and proved beyond doubt that the alleged sales or deliveries and the related data sheets of the Magnaset binders were not subject to confidentiality and thus became public knowledge.
• If the sale of an item and its delivery to a customer are claimed as prior public use, the recognisable features of the item for sale will generally become publicly accessible if the item for sale is handed over without an obligation of confidentiality and can be analysed by a person skilled in the art. Contrary to the patent proprietor's view, reproducibility is not necessary for a product that is freely available and analyzable on the market to be considered as prior art under Article 54(2) EPC (G 1/23, Reasons 73, 74). However, there is no free accessibility on the market if the product is sold with confidentiality agreements. Contrary to the opponent's view, decision G 1/23 does not lead to a different conclusion, as it relates to products that are on the market and accessible to the public. This requirement is not met if the product is marketed only subject to confidentiality agreements.
• In other words, if a product is marketed under confidentiality agreements, it does not become part of the state of the art, even if it can be analysed and reproduced.
• Furthermore, the Board holds, obiter, that under G 1/23, a product becomes prior art (part of the state of the art) (at least) if it is sold, is handed over to the customer, and the sale is without an obligation of confidentiality and can be analysed by a person skilled in the art (as cumulative requirements). 
• In the present case, the terms and conditions of the sales invoked by the prior uses provided for a confidentiality agreement, which is why the products sold were not available to the public and therefore do not form part of the state of the art within the meaning of Article 54(2) EPC.
• The opponent had offered two witnesses, who were heard by the OD. The witness did not fully support the opponent's case, it seems: "Mr. [G] also confirmed in his testimony during the oral proceedings before the Opposition Division that the composition of [the product] Magnaset was an internal matter and, to his knowledge, that customers were not supposed to know this composition. ... Witnesses G and A also stated that the manufacturing instructions and the production process were confidential (see the transcript ... ). The witness statements therefore confirm that there was no intention to disclose the composition of the Magnaset binder to customers."
• The Board concludes that the alleged public prior use is not proven to have been public. 
• "The Board considers that the opponent has not demonstrated and proved beyond doubt that the alleged sales or deliveries and the related data sheets of the Magnaset binders were not subject to confidentiality and thus became public knowledge."
• In such a case (public prior use by the opponent, wherein the prior use is moreover 'intra-company'), the standard 'beyond doubt' is indeed correct. The standard 'beyond doubt' was never abolished in the case law, in my view. It is the specific implementation of the general standard 'is convinced' in the case where the evidence is exclusively in the sphere of the opponent (the party asserting the fact). 

EPO 

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

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