Key points
- The opponent is Siemens. D1 is "Company publication "Desiro Class 380", Siemens AG". The opponent asserts public prior use based on D1, i.e. public prior use by the opponent, namely a sale of the vehicle by the opponent to a customer.
- The Board, in translation: "The Opposition Division concluded that the sale had made the prior use of "ScotRail Desiro Class 380" freely available to the public and that there were no specific circumstances that would justify the existence of a confidentiality obligation"
- "Documents D1 and D2 show that before the priority date of the patent, 4 July 2017, Desiro Class 380 rail vehicles were sold and delivered by the respondent [= the opponent] to the Scottish railway company ScotRail in July 2010."
- "In connection with the possible existence of a confidentiality agreement, the Opposition Division has already referred to decision T 2037/18 (point 4 of the headnote), according to which there is no fundamental presumption of confidentiality between manufacturers of railway vehicles and railway operating companies with regard to delivered and accepted vehicles.
- "Furthermore, each party must present and prove the facts favorable to its case. Therefore, in accordance with the principle "negativa non sunt probanda" recognized in the case law of the Boards of Appeal, any binding effect of a confidentiality agreement on the part of the recipient must be presented and proven by the patent proprietor (see case law, IV.C.2.2.8i))."
- As a comment, the principle "negativa non sunt probanda" is generally correct (but not a hard rule, I would add). In this case, all the evidence was in the sphere of the opponent, and the opponent must prove the alleged public prior use up to the hilt (I know that rule was 'abolished' in the GL 2026, but still).
- The Board's reasoning is obiter because the Board holds that the prior use lacks a feature of the claim. Hence, the claim is novel over it. There were no other objections, and the Board sets aside the impugned decision and maintains the patent as granted.
EPO
The link to the decision is provided after the jump.
Reason 2.4.1 refers to G 1/92 and holds that the composition or internal structure of a previously used product is made available to the public and thus forms part of the prior art if the person skilled in the art had direct, unambiguous access to it using known analytical techniques available to him before the relevant filing date. It seems this is obsolete and no longer the established case law, G 1/23 has removed this condition.
ReplyDeleteAs to the existence of a confidentiality obligation in the relationship between industrial companies, the Board refers to evidentiary rules and cites a presumption and the possible shift of the burden of proof. That is fine as long as the Board only looks at facts such as the content of the information disclosed to the buyer and its dissemination. But the issue also involves legal factors : is there an agreement between the parties, what is the contract law applicable to the agreement, does the agreement include confidentiality obligations, are they valid under the applicable law, how do they apply to the disclosed information ? EPO examiners and board members seem oblivious to their lack of competence and legal authority to interpret national contract laws.
Interesting point. Note, however, that foreign law can be treated as a fact by courts (such that the parties have to submit e.g. opinions of law professors of the country concerned as evidence)
ReplyDeletePlease refer to my comment on your post of 22 January relating to T 143/24. In this case, the T&Cs of the seller included a very broad confidentiality clause. It was not clear whether the buyer had accepted the seller's T&Cs. If the buyer had not agreed, then there was a conflict of law issue. The case law of European countries differs as to whether the seller's T&Cs are applicable if the buyer disagrees. So this may be a key issue. Then the validity of the confidentiality clause was quite disputable because it was so broad and had no time limitation. All of this makes the issue very complex. The opinion of a legal professor would be no more than an opinion, except if the parties expressed their agreement with its content. The EDs and the Boards have no authority and no competence to handle such complex contract law issues and should be advised against stepping in. This is an area for national courts and perhaps the UPC.
DeleteAfter G1/23, it may be
There is a lot to say about it, but perhaps another time.
DeleteThis raises a question of principle (what are the limits of EPO juridiction over contract law issues ?), it would be a good topic for an article in epi information.
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