T 1113/24 - OD should have heard witnesses

Key points

• The opposition is based on an alleged public prior use. The OD rejected the opposition. The opponent appeals. The OD had refused to hear two witnesses (as requested by the opponent) in connection with the public prior use. The opponent had substantiated the public prior use with documents, including technical drawings and diagrams.
• The OD had reasoned as follows: "The witnesses had been offered to confirm that the filling and cleaning installation according to the prior use "Adelholzener" anticipates all the features of claim 1 of the contested patent. However the documentary evidence supporting the alleged prior use D21 to D39 was of such a low quality that a skilled person would not be able to read any technical information from the diagrams of documents D23, D24, ..., and thus would not be able to identify whether some of the claimed features ... were disclosed in these documents or not."
• The Board: "The appellant [opponent] convincingly demonstrated that a substantial procedural violation took place in the opposition proceedings for the following reasons."
• "the [opponent] offered witnesses specifically to corroborate and explain the technical details of the circulation paths that were visible in the diagrams (but required expert interpretation). This means that the witnesses have not been offered to introduce new facts into the proceedings, but merely to confirm the facts alleged in the notice of opposition."
• "According to the established jurisprudence (CLBA, III.G.3.1.1), if the evidence offered as proof of contested facts essential to the settlement of the dispute is decisive, the body hearing the case must, as a rule, order that it be taken."
• "The opposition division also incorrectly based its decision on the prior use on an assumption about what the witnesses would say, thereby pre-empting the evidence's evaluation."
• "Additional clarifications provided by a witness to close a potential gap in the documentary evidence on file cannot be considered per se, even before hearing the witness, as new facts; hearing a witness would otherwise be futile (CLB, point III.G.2.4.1)."
• " The absence of written declarations by the offered witnesses is also not a reason to suspect that their testimony would exclusively introduce new facts, and also does not justify the decision of not hearing them."
• "This is because, according to the established jurisprudence it is a party's choice to present whatever means of evidence it considers to be suitable, and it is an opposition division's duty to take its decision on the basis of all the relevant evidence available rather than to expect the presentation of more preferred pieces of documentary evidence, and to speculate on the reasons for and draw conclusions from their absence "
• "While it is correct that oral evidence of a witness should only be taken when required to clarify matters decisive for the decision, the opposition division should have heard the witnesses before deciding what the alleged prior use was, and was not, disclosing, as the witnesses were offered to corroborate decisive facts already alleged in the notice of opposition."
• "By refusing to hear the proposed witnesses before deciding on the allegation of prior use, the opposition division has in fact proceeded to assesDat is evidence that had not yet been completely established thereby incurring a substantial procedural violation ..."
• The impugned decision is set aside, and the case is remitted to the OD. The Board does not decide on any other points.

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t241113eu1