T 1721/23 - Industry magazine as c.g.k.

Key points

• D10 is an article in a magazine from 2012 called "Surf" comparing fin boxes available on the market at that time. D10 was submitted with the statement of grounds of appeal as proof for common general knowledge."
• "The Board admitted D10 into the proceedings. In contrast to the patent literature D9, the disclosure of D10 is considered to be representative of common general knowledge in respect of different types of fins and fin plugs well known and available on the market before the priority date of the patent in suit."
• D10: Article "Slot-Machine", magazine SURF, 1-2/2012
• The case may seem of minor importance, perhaps. But I know of at least one technical field where  relevant prior art (and indeed common general knowledge) sometimes can be found only in some "industry journals / magazines". 

EPO 

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

T 0919/23 - The background section of a scientific article as common general knowledge

Key points

• "document D38 is a scientific article. Though it dates from 2011, such a document would not normally be considered as part of common general knowledge. However, the appellant convincingly argued by referring to decision T 1249/22 (Reasons 14.3) that a statement in the background section of a scientific paper explaining that something was a common measure may, depending on circumstances, be considered to establish that this measure was common general knowledge. "
• "The introductory portion of document D38 starts below the abstract on page 233 and continues until halfway through page 237. It discusses different sealing methods used in packaging processes at the time of the article and, in particular, gives an overview of the principles of conduction sealing and ultrasonic sealing (page 234, first paragraph: "Ultrasonic welding is an established and well-known method for joining polymers"). This is followed on page 235 by an explanation of the heating mechanism responsible for the ultrasonic welding of thermoplastic polymers. Finally, on pages 236 and 237, an account is given of the main process parameters of conduction sealing and ultrasonic sealing in a way which implies that these parameters had been well-known in the art for many years preceding the publication date of the scientific paper ("Typical sealing times range from [...]", "The sealing force is normally applied by springs or fluidic actuators"). "
• "The board cannot find any reason why the introductory portion of document D38 would not constitute proof of common general knowledge before the priority date of the contested patent." 

EPO 

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

T 1589/21 - (I) Evidence of c.g.k. is late-filed

Key points

•  " the appellant submitted that a party must be able to rely, at any stage of the proceedings, on common general knowledge and provide proof for that. This argument implies that a board does not have discretion to disregard documents (allegedly) supporting common general knowledge. However, the board cannot derive any such limitation from the EPC or the RPBA. The documents are evidence supporting allegations of fact which, under Article 114(2) EPC, may be disregarded if not submitted in due time by the party concerned. Article 12(3) and (5) RPBA confirms the board's discretionary power in this respect. The board therefore sees no reason for any preferential treatment of evidence for alleged common general knowledge. This is also in line with e.g. decision T 85/93, OJ EPO 1998, 183 (see also Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, V.A.5.13.1(c))."
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1788/19 - CGK provides the solution

Key points

•  "The Examining Division concluded that the skilled person would be led to the claimed solution on the basis of the common general knowledge familiar to the person skilled in the art. In order to assess this argument it is first necessary to establish which "art" we are talking about and who the skilled person is."
• The Board: "according to the problem-solution approach, the starting point for defining the appropriate "person skilled in the art" is the objective technical problem to be solved (see Case Law of the Boards of Appeal, 9th Edition, 2019, I.D.8.1.1, and in particular T 422/93, Headnote, point 1). In the present case, in view of the problem identified above (point 2.4), the skilled person would be a notional thermal engineer, skilled in the field of thermal insulation. Even if the "skilled person" were considered to be a group of people (Op. cit., I.D.8.1.2), which might include specialists in electrospray ion sources [because the application at issue is directed to an " assembly for an electrospray ion source"'], in view of the posed technical problem of providing improved thermal insulation (as proposed by the appellant), this group would have to be assumed to include a notional thermal engineer. What is under discussion is therefore the common general knowledge in the art of thermal insulation."
• "Claim 14 therefore differs from the embodiment of Fig. 3 of D4 only in that the hollow member has "an internal evacuated space". The appellant agrees that this is the distinguishing feature of claim 14. " ...In D4: "This air gap (a cylindrical cavity filled with air, which may be referred to as a "hollow member") "can help to insulate the first gas and sample capillary from the second, heated gas" (see paragraph [0036]), i.e. it impedes the heat transfer from the second gas to the first gas."


• The Board: " the knowledge of the person skilled in thermal engineering would not be limited to a few examples of vacuum insulation which would be familiar to the average layperson. The skilled person would understand, in particular, the physical principle underlying these examples, that by reducing the pressure in a gas layer (e.g. by evacuating air from a sealed enclosure), the thermal insulation provided by the layer can be significantly increased compared with a similar gas layer at atmospheric pressure. Moreover, the skilled thermal engineer would be aware that this principle has much wider application than the examples given by the appellant.  Hence, the use of a vacuum layer in place of the insulating air layer of D4 would, at least in principle, be an obvious measure for the skilled person attempting to improve the thermal insulation."
• The Board: "The Board does not accept that an inventive step attack based on a document representing the closest prior art in combination with common general knowledge is somehow inherently flawed. On the contrary, it is settled case law that common general knowledge may be used in the assessment of inventive step. The matter was put as follows under point 2.3 of the Reasons in T 939/92: "It hardly needs re-stating that the question of inventive step can only be considered on the basis of the relevant state of the art, see Article 56 EPC. However, Article 54(2) EPC does not limit the state of the art to written disclosure in specific documents; rather it defines it as including all other ways ('in any other way') by which technical subject-matter can be made available to the public. Therefore, the absence of a reference to a particular document does not mean that there is no state of the art, as this could reside solely in the relevant common general knowledge, which, again, may or may not be in writing, i. e. in textbooks or the like, or be simply a part of the unwritten 'mental furniture' of the notional 'person skilled in the art'. It is also clear that in the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact under contention, has to be proved, e.g. by documentary or oral evidence ..."."
• 
  

EPO T 1788/19 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0282/18 - Standard textbook CGK not admitted

Key points

• “ With the statement of grounds of appeal the appellant [opponent] filed document D7 as evidence of the properties of color-shifting coatings, and submitted in support of its admissibility into the proceedings that document D7 constituted a standard textbook in the technical field of optical security features and therefore evidence of the common general knowledge in this field.”
• “ The appellant further submitted with reference to decision T 1641/11 that such evidence could be submitted at any time, and that the document was filed in reaction to the appealed decision.”
• The decision does not indicate that the patentee disputed that D7 indeed is a standard textbook. 
• The Board does not admit the document.
• The Board “[in T 1641/11] the board admitted the documents in the exercise of its discretion and, contrary to the appellant's submissions, there is no support in the mentioned decision [T 1641/11] that evidence of common general knowledge submitted by a party at any time shall be admitted into the proceedings - let alone into contentious inter partes appeal proceedings. In addition, as submitted by the respondent with reference to decision T 85/93 (point 1.1 of the reason), evidence of common general knowledge, like any other evidence in support of a party's case, should be filed at an early stage of the proceedings before the opposition division, and may be rejected as inadmissible in the board's discretion if filed for the first time during appeal proceedings.”
• After reviewing the course of the first instance proceedings: “It follows that document D7 could - and should - already have been presented during the first-instance proceedings within the meaning of Article 12(4) RPBA 2007”

T 0282/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t180282eu1.html

3. Document D7 - Admission

3.1 With the statement of grounds of appeal the appellant [opponent] filed document D7 as evidence of the properties of color-shifting coatings, and submitted in support of its admissibility into the proceedings that document D7 constituted a standard textbook in the technical field of optical security features and therefore evidence of the common general knowledge in this field. The appellant further submitted with reference to decision T 1641/11 that such evidence could be submitted at any time, and that the document was filed in reaction to the appealed decision.

3.2 The board first notes that there is no element in the decision under appeal that would justify filing, in reaction thereto, document D7 in the appeal proceedings. In particular, the appellant submitted that they were surprised by the opposition division's conclusion in the decision under appeal that the optical variable layer disclosed in document D3 did not constitute an optically variable color-shifting coating as defined in feature 1.7 of claim 1, and that document D7 was filed in reaction thereto. However, as acknowledged by the appellant in the statement of grounds of appeal (sentence bridging pages 3 and 4), feature 1.7 of claim 1 already turned out to be essential during the first-instance opposition proceedings and, therefore, the appellant, during the first-instance proceedings, already had the opportunity to comment on - and, in particular, to file new evidence in respect of - the technical significance of the feature under consideration. It follows that document D7 could - and should - already have been presented during the first-instance proceedings within the meaning of Article 12(4) RPBA 2007 (which applies in the present case according to Article 25(2) RPBA 2020).

As regards decision T 1641/11 referred to by the appellant, the board notes that this decision concerned an ex parte case in which the applicant, with the statement of grounds of appeal, filed two documents as evidence of common general knowledge and that these two documents were admitted into the proceedings by the board deciding on the case (see decision T 1641/11, point 3.6 of the reasons, second and third paragraphs, together with point III of the summary of facts). However, the board admitted the documents in the exercise of its discretion and, contrary to the appellant's submissions, there is no support in the mentioned decision that evidence of common general knowledge submitted by a party at any time shall be admitted into the proceedings - let alone into contentious inter partes appeal proceedings. In addition, as submitted by the respondent with reference to decision T 85/93 (point 1.1 of the reason), evidence of common general knowledge, like any other evidence in support of a party's case, should be filed at an early stage of the proceedings before the opposition division, and may be rejected as inadmissible in the board's discretion if filed for the first time during appeal proceedings.

3.3 In view of these considerations, and since according to Article 12(4) RPBA 2007 the board has discretion not to admit facts and evidence which could have been presented in the first instance proceedings and, in addition, according to Article 12(2) RPBA 2020 (which applies in the present case according to Article 25 RPBA 2020) "a party's appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based", the board decided, in the absence of reasons for doing otherwise, not to admit document D7 into the proceedings.

T 1370/15 - Ex officio objections in opposition appeal

 Key points

• The Board, in the headnote: “Not only in ex parte-, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field.”
• There appear to be two aspects (1) the board can rely on common general knowledge without providing evidence (unlike e.g. USPTO PTAB and EPO examiners, I believe) and (ii) the board can introduce new common general knowledge (as well as new prior art documents, by the way) both in examination appeals and in opposition appeals.
• Perhaps to provide context: the patent was revoked by the OD and the opponent did not make any submissions in appeal.
• The Board finds that the “opposition division erred in finding that the subject-matter of claims 1 and 9 of the granted patent lacked novelty. Hence, “the appeal has revealed that it is allowable within the meaning of Article 111(1) EPC” (which does not mean that the patent is not revoked by the Board).
• Article 111(1) EPC: “Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.”
• So one way of looking at Article 111(1) EPC is that the Board's examination of the allowability of the appeal means examining whether the appellant has shown that a bearing reason for the impugned decision is incorrect (here, that the claims are not novel, the OD's decision being to revoke the patent). In the next stage, if the appeal is ‘allowable’  in that sense, the Board ‘decides on the appeal’ and then “may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution”.
• The Board: “ to examine the subject-matter of the claims submitted for a decision on appeal. As opposition proceedings were initiated in mid-2013 and the appeal was filed in mid-2015, a remittal of the case would unreasonably delay its final settlement. Furthermore, the board is knowledgeable in the relevant technical field of user interfaces for broadcast applications from the experience of its members working on cases in this field.”
• I don't think the Board here wishes to suggest that in other appeal cases the Board is not knowledgeable in the relevant technical field, though in practice sometimes the first instance examiners may be more specialized in a narrow technical field.
• The Board, “Remitting a case because of new submissions would thus generally be contrary to what was intended with Article 11 of the revised RPBA of 2020.”
• The patentee objected to the Board's introduction of common general knowledge late in the oral proceedings. The Board assumes that these objections are legal arguments which are always admissible in line with T1914/12. The Board expresses that this is not certain: “While Article 114(2) EPC does indeed not mention the EPO's power to not admit ("disregard") legal reasoning (arguments), general principles of the law might prevent taking into account the legal reasoning under certain circumstances.”
• The Board's competence to raise new issues is not restricted by Article 12(2) RPBA 2020. “Given that these provisions are addressed to the parties and not to the boards, they have no immediate impact on the boards raising new issues under Article 114(1) EPC.”
• The Board may also raise new objections of own motion in opposition appeal. “While the Enlarged Board found in G 10/91 that the appeal procedure in inter partes cases was less investigative than the procedure of the opposition division, Article 114(1) EPC - which requires the EPO to examine the facts of its own motion - still applies. This means that a board is not excluded outright from introducing new facts and evidence in inter partes proceedings.”
• The Board is not required to present evidence of alleged common general knowledge citing T1090/12, point 6.2: “there is ... no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge. In proceedings before the EPO, a board of appeal has to respect the right to be heard and to give reasons for its decision. In cases where a board refers to common general knowledge as state of the art, it is not obliged to provide documents in every conceivable case” (cited in the present decision in r.5.3.8 where there is a typo in the case number). 
• I've missed T1090/12 on this blog but Laurent Teyssèdre spotted it on his blog.

EPO T 1370/15

https://www.epo.org/law-practice/case-law-appeals/recent/t151370eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. Interpretation of claim 1 of the granted patent

2.1 Claim 1 of the granted patent specifies that "the UI provider is configured whereby for a first transmission method a processing method from the plurality of processing methods is selectable and for a second transmission method a processing method from the plurality of processing methods is selectable independently from the selection of the processing method of the first transmission method".

2.2 Contrary to the opposition division (see point XVIII(a) above), the board agrees with the appellant (see point XIX(f) above) that the wording of granted claim 1 implies that a user interacts with a single user interface (UI) to set processing methods for transmission methods in which the selection of a first processing method does not put any constraints on the selection of further processing methods. This interpretation of claim 1 is based on Figures 2 and 4 and the corresponding parts of the description.

T 0633/16 - Wikipedia without version

Key points

• The Board does not admit Wikipedia citations, inter alia because “[the party has not indicated the versions of the Wikipedia extracts it refers to (e. g. the version online the day before the priority of the opposed patent or the version online the date of the statement of grounds of appeal).”
• Nevertheless, “the Board is of the view that the passages cited from these Wikipedia extracts disclose not more than the common general knowledge of the skilled person at the priority date of the opposed patent”. 

EPO T 0633/16 - link

3.2 Admission of the appellant's Wikipedia citations

The respondent requested to disregard the Wikipedia citations "Gabriel Lippmann", "Holography" and "Heat sealer" and the appellant's arguments based thereon, because they had not been cited during the opposition proceedings and were not attached as annexes to the statement of grounds of appeal (contrary to Article 12(2)(a) RPBA 2007).

The Board notes that the appellant has not indicated the versions of the Wikipedia extracts it refers to (e. g. the version online the day before the priority of the opposed patent or the version online the date of the statement of grounds of appeal). 

Neither had it attached the extracts as annexes to the statement of grounds of appeal, contrary to the requirements of Article 12(3)(a) RPBA 2020 in combination with Article 25(1) RPBA 2020. Therefore, the Board disregards these Wikipedia extracts (Article 12(4) RPBA 2007 in combination with Article 25(2) RPBA 2020). 

In any case, the Board is of the view that the passages cited from these Wikipedia extracts disclose not more than the common general knowledge of the skilled person at the priority date of the opposed patent.

T 0247/17 - Res judicata, evidence CGK, and documents on appeal

Key points

• The patentee appellant files documents with the Statement of grounds. The Board admits these documents.
• “The opposition division thus had indicated that they intended to side with the patent proprietor on that point in the summons to oral proceedings. Consequently there was at this stage no necessity for the patent proprietor to provide further evidence regarding that question. The reversal of the opinion of the opposition division in the contested decision could not have been reasonably expected by the patent proprietor prior to the oral proceedings. This justifies, in the opinion of the Board, the filing of further evidence in that regard at the beginning of the appeal proceedings.”
• So, in the first instance proceedings, the patentee can wait for the negative opinion of the OD with filing documents. This is of course different in appeal (and the justification for the different treatment is not clear to me).
• As to evidence of CGK :“it is not because [the publication date of D14 and D16-D19] falls after the priority date of the patent in suit that these documents necessarily cannot be used to establish the content of the common general knowledge at the priority date of the patent in suit. It is thus not a factor of relevance in the admittance of these documents in the present case.”
• D18 is a review article published 10 years after the filing date. I don't readily see how it can be used as evidence of CGK at the filing date/priority date.
• On the issue of res judicata: “In decision T 731/11 of 29 June 2012 pertaining to an appeal lodged in the examination phase of the application underlying the present case, the Board in a different composition concluded that the claims of the then main request did not meet the requirements of Article 123(2) EPC [...] in accordance with consistent case law, opposition proceedings are separate and distinct from examination proceedings such that a decision by a board of appeal on an appeal against a decision from an examining division is not binding in subsequent opposition proceedings or on appeals therefrom, having regard both to the EPC and to the principle of res judicata”
• The Board finds that claim 1 lacks basis. “Both features are however separately defined in claims 2 and 3 of the application as originally filed whereby these claims only depend on claim 1 and do not depend from one another. Claims 2 and 3 therefore do not provide an adequate basis for the combination of these features.”

EPO T 0247/17 -  link

V. The patent proprietor (appellant) lodged an appeal against that decision and filed with the statement of grounds of appeal two sets of claims as first and second auxiliary requests. Also, it was requested to admit the following documents into the proceedings:

D14: Wikipedia article of the term "Carothers equation" dated 1 March 2017

D15: Bland et al., Biomaterials 17 (1996), pages 1109-1114

D16: Schneider et al., Operative Dentistry, 2006, 31-4, pages 489-495

D17: Park et al., Dent. Mater. 2009, December 25 (12): pages 1569-1575

D18: Swiderska et al., Polish Journal of Chemical Technology, 2013, 15(2): pages 81-85

D19: Shalaby et al., Polymers for Dental and Orthopedic Applications, Shalaby and Salz, eds., CRC Press New York NY 2007, pages 112 and 113

Reasons for the Decision

1. Admittance of documents D14-D19

1.1 Article 12(4) RPBA 2007 applies to a statement of grounds of appeal filed before the entry into force of the RPBA 2020 (Article 25(2) RPBA 2020), and thus also to any document filed therewith.

1.2 Documents D14 to D19 were filed with the statement of grounds of appeal. The common denominator to these documents is that they relate to the polymerization of monomers containing more than one polymerizable group. These monomers are referred to as multifunctional monomers in D14-D19.

1.3 The appellant argued that documents D14-D19 were filed to address the reasoning of the opposition division under point 2.11 of the contested decision in which it was concluded that the term "multifunctional acidic monomer" in the sense of claim 1 of the main request covered the monomer 4-AET disclosed in the composition of comparative example 12 of D1, even if that monomer contained only one polymerizable group.

T 1601/15 - CGK doesn't need a hint

Key points

• In this opposition appeal, the objective technical problem is how to provide an alternative 'friction prevention or friction reduction' (the claim is directed to an ‘actuating device for locking needles in injection molding tools’). The Board explains that the skilled person needs no hint or pointer to apply something that is part of his common general knowledge.
• The Board, in translation: “For the skilled person, who - prior to the priority date - started from the device of the prior use and set himself the task of finding an alternative type of friction prevention or reduction, it would be obvious, in view of his specialist knowledge, to use a diamond-like material.
• The Board in translation: “The argument that the skilled person would have had no reason to use his specialist knowledge is not convincing. The skilled person does not need any reason to apply his specialist knowledge. To a certain extent, his specialist knowledge forms the technical background for every activity of the skilled person and is incorporated into all his decisions. In this regard, the general specialist knowledge must be distinguished from the teaching of subject-specific publications.”.

EPO T 1601/15 - link





IV. Anspruch 1 des nunmehrigen Hauptantrags, von dem die Einspruchsabteilung der Auffassung war, dass er den Erfordernissen des EPÜ genüge, lautet wie folgt:

"Betätigungsvorrichtung (10) für Verschlussnadeln in Spritzgießwerkzeugen
a) mit Nadelverschlussdüsen,
b) mit einem Hubelement (20), [...]

Entscheidungsgründe

3.3 Fachmann

Im vorliegenden Fall ist der Fachmann ein Maschinenbauer mit Erfahrung auf dem Gebiet der Spritzgießmaschinen und -werkzeuge. Als solcher ist er mit Reibungs- und Bewegungsvorgängen, wie sie in solchen Vorrichtungen auftreten, vertraut.

3.4 Objektive technische Aufgabe

Die Einspruchsabteilung hat die technische Aufgabe darin gesehen, eine alternative Art der Reibungsverhinderung bzw. Reibungsverminderung vorzuschlagen.

[...]




3.5 Naheliegen

Für den Fachmann, der - vor dem Prioritätstag - von der Vorrichtung der Vorbenutzung ausging und sich die Aufgabe stellte, eine alternative Art der Reibungsverhinderung bzw. Reibungsverminderung zu finden, wäre es angesichts seines Fachwissens, wie es insbesondere durch die Druckschrift D15 belegt ist (vgl. Tabelle 2, Spalten 2.3, 2.4, 2.6 und 2.7), naheliegend gewesen, zu einem diamantähnlichen Material zu greifen und die verschleißgefährdeten Bauteile von Spritzgießwerkzeugen entweder zur Gänze aus einem solchen Material herzustellen oder eine entsprechende Beschichtung auf einem geeigneten Grundmaterial (z.B. Werkzeugstahl) aufzubringen.

T 2138/14 - Not attending oral proceedings examining division

Key points

• The applicant did not attend the oral proceedings before the ED. The ED raised a new clarity objection during the oral proceedings. The Board considers this to be a substantial procedural violation.
• “According to G 4/92 a decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings []. Although Opinion G 4/92 explicitly only concerns inter partes proceedings [], the same principle has been applied in ex parte proceedings [].”
• As a comment, Art.113(1) EPC refers to "grounds or evidence" but G 4/92, hn.1  refers to "facts put forward for the first time during those oral proceedings"
• Furthermore about whether D7 evidences common general knowledge: “D7 may not be an article providing a broad review of a topic, but it refers to snapping as "one of the most frequently used techniques". In the board's view, the reference in an article of a technical journal to a certain technique as being "one of the most frequently used techniques" has the effect that the technique can be considered to be part of the common general knowledge of the skilled person. As in the case of a review article, D7 is not cited for the document's own contribution to the art, but as a reference to what is common in the technical field. As a consequence, D7 proves what an experienced person in the field in question is expected to be aware of "

EPO T 2138/14 -  link

Reasons for the Decision

1. The appeal is admissible.

Alleged procedural violations

2. The appellant argued in the statement of grounds of appeal that its right to be heard had been infringed, since no objection regarding lack of clarity of the term "proximate" had been raised in the examination proceedings prior to the decision.

2.1 The relevant procedural steps in the present case may be summarised as follows.

In the European search opinion the examining division cited documents D1 to D5. It argued that the subject-matter of independent claims 1 and 9 lacked novelty in view of D1. The subject-matter of the dependent claims was considered to lack an inventive step in view of D1 in combination with documents D2 to D5. Subsequently, the applicant submitted amended claims and arguments addressing the objections.

T 2180/16 - A disadvantage of 16 years opposition proceedings

Key points

• In this opposition appeal, the Board notes that if the priority date of the patent is 1997 and the opponent invokes certain alleged common general knowledge for the first time during the oral proceedings before the Board in May 2019, the argument is 'rather an ex post facto analysis' if the opponent does not provide evidence of the CGK in 1997.
• Filing date of the patent in 1998, grant in 2002, notice of opposition on 03.04.2003. Summons for OD in 2012. Decision OD in 2013 (claims as granted and AR-3 lack basis, AR-4 not novel over D1. First appeal decision July 2015 (T2308/13; D1 does not anticipate the new Main Req, remittal). Second OD decision July 2016: patent maintained in amended form (things are speeding up). The present decision of 08.05.2019, notified in writing 01.07.2019: opponent's appeal dismissed.

EPO T 2180/16 -  link

2.6.5 La chambre rappelle que la priorité du brevet en litige date de 1997, c.-à-d. plus que vingt ans avant la procédure orale devant la chambre lors de laquelle la requérante a, pour la première fois, fait valoir des connaissances générales de l'homme du métier telles qu'énoncées aux points 2.6.3 et 2.6.4 ci-dessus. Or, la requérante n'a pas fourni de preuve pour de telles connaissances générales à la date effective du brevet en litige. En l'absence de telles preuves et au vu de l'enseignement de D1, la chambre ne peut accepter l'argument que l'homme du métier n'aurait pas suivi cet enseignement et n'aurait pas choisi les exemples 9 et 11 de D1 afin de résoudre le problème posé. Cet argument relève plutôt d'une analyse a posteriori. Par ailleurs et comme l'admet la requérante elle-même, bien que l'exemple 5 de D1 montre qu'une augmentation de la température de recuit mène à une valeur "r moyen" plus élevée (1,6 comparé à 1,5 pour l'exemple 4), l'homme du métier n'aurait pas augmenté davantage la température de recuit afin d'éviter des phénomènes de recristallisation. L'augmentation de la température de recuit n'aurait par conséquent pas permis à l'homme du métier d'obtenir une tôle selon la revendication unique qui requiert une valeur "r moyen" supérieure à 1,6.

2.6.6 Il résulte de ce qui précède que la revendication unique de la requête principale est considérée comme satisfaisant à la condition d'activité inventive requise dans l'article 56 CBE.

Dispositif

Par ces motifs, il est statué comme suit

Le recours est rejeté.

T 1727/14 - Industry journal and CGK

Key points

• The Board does not admit an article from an industry journal (" Fachzeitschriften") because it would not be common general knowledge. The Board states that articles in industry journals can be common general knowledge, but that there is no rule that anything in industry journals is CGK.
• " Dem Argument der Beschwerdeführerin, dass Fachzeitschriften besonders geeignet sind, als Nachweis für das einschlägige allgemeine Fachwissen zu dienen, kann nicht gefolgt werden. Das allgemeine Fachwissen im Sinne des Patentrechts entspricht dem Wissen, das dem Fachmann aufgrund seiner Ausbildung und seiner Berufserfahrung zur Verfügung steht. Fachzeitschriften hingegen versuchen in der Regel, dem Fachmann neue, für seine Tätigkeit relevante Inhalte zu vermitteln, also Dinge, die in der Regel noch nicht Teil des allgemeinen Fachwissens geworden sind, und es möglicherweise auch nie sein werden. Dies bedeutet nicht, dass Inhalte einer Fachzeitschrift nicht unter Umständen das Fachwissens belegen können, aber die bloße Tatsache, dass etwas in einer Fachzeitschrift veröffentlicht wurde, erlaubt nicht den Schluss, dass es Teil des Fachwissens ist." 
• Just to cite the Guidelines G-VII 3.1. "In special cases, articles in technical journals can be representative of common general knowledge (see T 595/90). This applies in particular to articles providing a broad review or survey of a topic (see T 309/88)." The article D16 at issue is: " S. Seibel, "Vielfalt am laufenden Meter", Kunststoffe 12/2005, Seiten 38 bis 46".
• As a second issue, the opponent (respondent) had also filed a declaration E1 by a Mr. Soeterbroek (after study of the file, I think that F&S III is incorrect where it states that the submission of 13 November 2018 were made by Patentee). The patentee contests admissibility arguing that Mr. Soeterbroek was bound by a secrecy agreement with the patentee. I note that E1 is indeed critical for denying technical effect (3.1.2) and lack of inventive step of the main request. 
• The Board finds that the question of whether a secrecy agreement exists is reserved for national courts and can not be resolved by the Board. (" Diese Fragen sind aber dem zuständigen nationalen Richter vorbehalten und können von der Kammer nicht geklärt werden.") In case a breach of secrecy exists, this can be pursued by Patentee before the national courts. 
• I don't think that this can be the correct approach - in manifest cases of breach of secrecy (e.g. by a national patent attorney breaching his professional secrecy obligation to his own client) the evidence must (in my view) be held inadmissible by the Board. Each court (forum) has (and must have) its own rules about when unlawful evidence is excluded (this depends also on the nature of the proceedings, e.g. between criminal and civil cases). If the existence of a secrecy agreement is invoked by a party, that party should proof (i) the relevant facts and (ii) any relevant national law (e.g. of the EPC contracting state at issue). National law is to be proven as a fact in EPC proceedings (e.g. by declarations by law professors). If the party requesting the non-admittance does not substantiate its case (e.g. lack of evidence regarding the relevant national law provisions), then the Board can reject the request for non-admittance on that ground. I think there is no legal basis for the argument that the existence of a secrecy agreement is reserved for national courts: in case of alleged secrecy of prior art, the EPO routinely decides on the matter. 
• The Board may have been of the opinion that a simple breach of a contractual secrecy obligation, is never sufficient to hold the evidence inadmissible, as a matter of EPO procedural law. Such a rule could be based on a balancing of the general interest that there are no invalid patents, against the general interest that contracts are to be honoured. However, I am not sure if this rule is established EPO case law (the Board does not cite relevant case law). If such a rule exists, then the EPO indeed does not go into the question of proof of the existence of the alleged secrecy agreement - which is, however, something different from this question being "reserved" for the national courts.

EPO T 1727/14 -  link

Entscheidungsgründe

1. Zulässigkeit der verspäteten Einreichungen

1.1 Druckschriften D16 bis D19

Die Druckschrift D16 ist eine veröffentlichte europäische Patentanmeldung, die Druckschrift D17 ein Artikel, der in einer Fachzeitschrift veröffentlicht wurde. Die Beschwerdeführerin hat diese Druckschriften zum Beleg des Fachwissens vorgelegt. Gemäß der Rechtsprechung der Beschwerdekammern sind solche Druckschriften in der Regel aber nicht geeignet, das Fachwissen des Fachmannes zu belegen.

Dem Argument der Beschwerdeführerin, dass Fachzeitschriften besonders geeignet sind, als Nachweis für das einschlägige allgemeine Fachwissen zu dienen, kann nicht gefolgt werden. Das allgemeine Fachwissen im Sinne des Patentrechts entspricht dem Wissen, das dem Fachmann aufgrund seiner Ausbildung und seiner Berufserfahrung zur Verfügung steht. Fachzeitschriften hingegen versuchen in der Regel, dem Fachmann neue, für seine Tätigkeit relevante Inhalte zu vermitteln, also Dinge, die in der Regel noch nicht Teil des allgemeinen Fachwissens geworden sind, und es möglicherweise auch nie sein werden. Dies bedeutet nicht, dass Inhalte einer Fachzeitschrift nicht unter Umständen das Fachwissens belegen können, aber die bloße Tatsache, dass etwas in einer Fachzeitschrift veröffentlicht wurde, erlaubt nicht den Schluss, dass es Teil des Fachwissens ist.

Die Druckschriften D18 und D19 hingegen sind unzweifelhaft geeignet, das Fachwissen im Bereich der Kautschuktechnologie nachzuweisen und sind daher zugelassen worden.

1.2 Erklärung E1

Die Beschwerdeführerin beantragte, die Erklärung E1 von Herrn Soeterbroek nicht zuzulassen, da dieser durch eine Geheimhaltungsverpflichtung gebunden und deshalb nicht befugt sei, Ausführungen zu den von ihm durchgeführten Versuchen zu machen.

Um diesem Antrag zu folgen, müsste die Kammer die Vereinbarung zwischen Herrn Soeterbroek und der Beschwerdeführerin auf ihren Inhalt und ihre Gültigkeit prüfen bzw. untersuchen, ob die einseitige Kündigung der Vereinbarung durch Herrn Soeterbroek wirksam war oder nicht. Diese Fragen sind aber dem zuständigen nationalen Richter vorbehalten und können von der Kammer nicht geklärt werden.

Falls tatsächlich ein Vertragsbruch durch Herr Soeterbroek vorliegen sollte, könnte ihn die Beschwerdeführerin vor den zuständigen nationalen Gerichten belangen und ggf. Schadenersatz fordern; für das Verfahren vor der Kammer ist das Vorliegen eines solchen Vertragsbruchs jedoch irrelevant.

Dem Antrag auf Nichtzulassung der Erklärung E1 kann somit nicht stattgegeben werden.