T 0840/24 - Opponent's prior use and confidentiality of sale

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.

T 0953/23 - The proprietor's own prior use

Key points

• The inventor is "PREISSMAN, Howard".  The OD rejected the opposition. The opponent appeals. The proprietor is Keller Medical, Inc.
• "D1 is an article published in 2012, i.e. after the filing date of 29 April 2009 of the patent [filed without priority]. The article concerns the development of the "Keller Funnel". 
• "In the section of D1 entitled "Serendipity", second paragraph, it is explained that Mr Preissman perfected the funnel's design  ..."
• "On the first page of the article (p. 283 at the bottom right), it is stated that "[w]e began introducing the prototype and its potential benefits to influential plastic surgeons at the beginning of 2009 ...". The appellant [opponent] alleged that it followed from this passage that the invention had been disclosed to the public, namely to influential plastic surgeons, before the filing date of the patent in suit."
• The Board: "In the absence of any indication of a different understanding, the Board interprets the expression "at the beginning of 2009" in accordance with general linguistic usage. According to which "at the beginning of 2009" refers to a point of time not later than within the first three months of 2009. Had a later period been intended, wording such as mid 2009 would have been used. Thus, the Board is convinced that, on the balance of probabilities, the disclosure to the influential plastic surgeons did take place before the filing date of the patent in suit."
• The Board, earlier in the decision: "it is common ground that the facts relating to the prior use were not under the control of the appellant and that both parties had equal access to the evidence. In accordance with the principle of free evaluation of evidence and in line with the established case law (see CLBA 11th edition, III.G.4.3.2 a)), the Board assessed the relevant facts on the basis of the balance of probabilities."
• I'm not sure if the part in italics is entirely accurate, but for the outcome of the case, this detail does not matter.
• The patent is revoked.

EPO 

The link to the decision is provided after the jump.

T 0807/23 - Applying G 1/23

Key points

• Perhaps unsurprisingly, a case about polymers.
• "In the decision under appeal, the opposition division found that the data provided in D11 did not enable the skilled person to prepare the commercial product Borclear RB709CF disclosed in that document. Therefore, in view of G 0001/92 and T 1833/14, it was concluded that D11 was not state of the art within the meaning of Article 54(2) EPC (contested decision, page 12, first to fifth paragraph)."
• The decision of the OD was taken on 14.02.2023. The referral in case G 1/23 was in June 2023.
•   "In application of [G 1/23], it is clear to the present Board that the reproducibility requirement is no longer a valid criterion to assess whether a product put on the market before the date of filing of the opposed patent or technical information about such a product is state of the art within the meaning of Article 54(2) EPC. This was also not disputed by the parties during the oral proceedings.

  1.4 Accordingly, the product Borclear RB709CF and the corresponding data sheet D11 are state of the art within the meaning of Article 54(2) EPC."

• The proprietor/respondent raised the question of whether document D11 could be taken as the closest prior art. The Board does not make a decision on this question. 

•  Decision G 0001/23 sets out further considerations regarding the use of non-reproducible prior art in relation to inventive step (see in particular points 92, 93, 95 and 96 of the reasons). As these considerations were not available to the parties and the opposition division at the time of the decision under appeal, the case should also be remitted to the opposition division so that it can consider whether D11 is suitable to be taken as the closest prior art in light of G 0001/23 after giving both parties the possibility to take position on the application of the decision of the Enlarged Board to the present case."

• Point 96 of G 1/23: 96. "It follows from the above that disclosed but non-reproducible features of a product may, but need not, flow into the assessment of inventive step. Adding some lemon juice to a glass of Coca-Cola for a less sweet taste may not be inventive simply because the recipe for Coca-Cola is secret and therefore the original taste of Coca-Cola is considered as unattainable. On the other hand, achieving the original taste of Coca-Cola without sugar or caffeine is probably an unsolved problem at the time of writing. There are no formal and strict rules as to how a non-reproducible but publicly available product or any of its properties can be taken into account when inventive step is examined. The relevant technical teaching that a skilled person would take from such a product is always case specific - it depends on both the product in question and the invention under examination."
• As to the first example, would the claim under examination be: "a composition comprising Coca-Cola and lemon juice"? Would that claim be clear? If not, would the claim be " a composition comprising ... [ the secret ingredients of Coca Cola] + lemon juice"?   Is it correct that the EBA stipulates that such a claim would not be inventive, even if the recipe in square brackets was non-obvious? Would it make a difference if the claim were rewritten into a claim for the preparation method?

 

 

• It seems predictable that the Board will have to decide on the question in a second appeal. 

• 
  

EPO 

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

T 1472/22 - Newly asserting a public prior use in appeal

Key points

• This decision was issued already in January 2025, but it still a remarkable one.
• The opponent included a new public prior use attack with the Statement of grounds.
• The Board admits it. Chiefly because it is based on a public prior use that the proprietor had submitted in another opposition case, where he was the opponent (and the opponent was the proprietor). Still, there was some delay as the public prior use was known to the opponent since 2019 and filed in the appeal only in 2022.
• The following remark is of general interest: (in translation) " the Board does not share the patent proprietor's view that the prior use should have been raised before the Opposition Division. The opponent's statement of grounds of appeal is directed against the maintained version of the patent, which is based on auxiliary request 3, which was only filed during the oral proceedings before the Opposition Division. Any findings made by the Opposition Division in the [preliminary opinion of the OD], for example, in paragraph 8.4 regarding the disclosure of document D4 (referred to therein as E4), are irrelevant in the present case for the admission of this prior use, since no auxiliary requests had yet been filed at the time of the summons; see paragraphs 3.4 and 3.5 of the statement of facts in the contested decision. Furthermore, there was no reason for the opponent to submit the prior use before the oral proceedings, since the [preliminary opinion of the OD] already considered documents E2 (D2 in the appeal proceedings) and E3 to be novelty-destroying for the granted version of the patent, see paragraphs 8.2 and 8.3 thereof (for the comparable situation of auxiliary requests, which could theoretically have been filed in their own right, see T 0141/20, guiding principle and point 5.4 of the Reasons)."
• This reasoning makes sense. But I don't know if all boards see it this way. 
• "pursuant to Article 12(4) RPBA, it is within the board's discretion whether to admit the new submission. According to the non-exhaustive list of criteria in Article 12(4), fifth sentence, RPBA, the board will consider, for example, the complexity of the amendment or the need for procedural economy when exercising its discretion. In the present case, document D12, originating from the patent proprietor, with technical drawing D7b on the second page of the document, contains a scaled technical drawing of the lock [..]; see also the patent proprietor's submissions on pages 13 and 14 of D13. In the board's view, D12 is therefore easily understandable, particularly for the patent proprietor. Furthermore, the document enables an analysis of the movements of the rotary latch and pawl when opening the lock if these components are transferred into a CAD program, for example, as in D15, and rotated around their pivot points. This allows for the derivation of force action lines for the contact force as well as the respective lever arms of the contact force relative to the pivot points of the rotary latch and pawl. Even with a certain inaccuracy in the transfer to a CAD program, this allows at least qualitative statements to be made regarding the torque that the rotary latch imparts to the pawl. Therefore, in the Board's view, document D12 concerns a feature that is essential to the outcome of the appeal proceedings."
• "The Board notes that, in the case law of the Boards of Appeal, new prior use that is only raised during the appeal proceedings is generally not admitted. However, the reason for this is, in most cases, that the prior use originates from the opponent's environment, making it practically impossible for the patent proprietor to independently examine the facts relied upon. In the present case, the Board therefore considers it an exceptional circumstance that the prior use not only originates from the patent proprietor, but that the patent proprietor itself submitted the relevant facts, even during the proceedings before the EPO. This eliminates the difficulty of assessing the evidence on the part of the patent proprietor. Nor can it invoke ignorance of unexpected facts."
• "The board concludes from all of the above that the lock disclosed in prior use D12 has all the features of claim 1 of auxiliary request 3, so that its subject-matter lacks novelty, Article 54 EPC. "
• The patent is revoked.

EPO 

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

T 0490/23 - The board inspects the public prior use device

Key points

• The Board, in translation; "During the oral proceedings, the board decided, pursuant to Article 117(f) and Rule 117 EPC, to take evidence by inspecting the prior use subject-matter "Comfort X3" in order to determine the behavior and stability of the belt tensioner flaps under dynamic loading of simulated impact forces from various directions, and thereby answer the crucial question of the suitability of the folding elements as side impact protection. "
• "During the inspection, a direct measurement of the length of the folding element of the "Comfort X3" child seat projecting beyond the outer wall was taken on the prior use subject-matter, which did not appear to be reliably possible based solely on the cited illustrations. The taking of evidence took place in the presence and with the participation of the parties. For the decision to take evidence and the results of the inspection, reference is made to the minutes of the oral proceedings."
• "The visual inspection led to the following results: ..."
• "For the reasons stated above, the Board does not consider the belt tensioner flap of the "Comfort X3" child seat to be suitable as impact protection within the meaning of feature M1.2 of granted claim 1. Features 1.3 to M1.5, which require the presence of side impact protection according to feature M1.2, are also not derived from this prior use."
• Regarding other features of claim 1: As can be seen from images IMG_0789 and IMG_791, attached to the minutes of the oral hearing, the entire extension of the flap element of the belt tensioner flap is 14.3 cm. This is undisputed."
• " The subject-matter of granted claim 1 is therefore novel over the prior use "Comfort X3", as correctly found by the Opposition Division."

EPO

 

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

T 0449/23 - (I) Resin blend E6300

Key points

• This decision contains many interesting points. In this post, something about commercially available products identified only by a tradename.
• "Example A of D5 [US 2004/0050704 A1] describes the preparation of an electrodeposition bath used to prepare electrodeposition coating compositions by mixing the following components (D5, paragraph [0044], table): - Resin blend E6300, "a resin blend available from PPG Industries, Inc.""
• "The sole matter of dispute was whether "resin blend E6300" of example A (D5, table in paragraph [0044]) is a resin emulsion (i) comprising an aminated resin (A) and a blocked isocyanate curing agent (B) as required by claim 1."
• "To the patent proprietor's advantage, it is assumed in the following that resin emulsion (i) with components (A) and (B) of claim 1 of the main request is not disclosed in example A of D5. More specifically, it is assumed that neither resin blend E6300 nor information pertaining to the nature thereof was made available to the public on the effective date of the patent."
• "the objective technical problem can only be formulated as proposed by the opponent, namely as the provision of an appropriate resin for the preparation of the cationic electrodeposition coating composition according to example A of D5."
• " The board agrees with the opponent that the solution to this problem is obvious in view of D5 alone. Specifically, paragraph [0023] of D5 discloses acid-solubilised reaction products of polyepoxides and primary or secondary amines as possible cationic electrodepositable resins, and states that these amine salt group-containing resins are usually used in combination with a blocked isocyanate curing agent. "
• "The subject-matter of claim 1 of the main request therefore lacks inventive step over D5."
• As a comment, and subject to G 1/23 (still pending at the time of writing): Is the example enabled? Should we treat Example A of D5 in this respect as a document or as a commercially available product? 
• If Resin blend E6300 is deemed to be enabled, is its composition disclosed? 
• In the case at hand, the dispute may also have been whether the commercial product met the definition of the resin emulsion in the claim and whether that was proven. 

EPO 

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

T 1311/21 - Standard of proof, prior use, sale by a related company

Key points

• E7 is a user manual written by the company Sensors, Inc. for the product SEMTECH-DS sold by Sensors, Inc.
• "the board concurs with the patentee that the evidence on the question of whether E7 is part of the prior art is not in a neutral sphere of control, inter alia due to the undisputed business relationship between the opponent and Sensors, Inc., the board is of the opinion that the patentee did have opportunities to search for counter-evidence. In particular, as discussed during oral proceedings, the patentee could have directly contacted not only Sensors, Inc., but also the purchaser of SEMTECH-DS explicitly mentioned in document E7d, namely "The Texas Transportation Institute", whose contact details were even given in E7d, or searched for any other purchaser. 
• "Since the user manual E7 whose public availability prior to the priority date of the patent is at issue is neither within the sphere of control of the opponent nor within a neutral sphere of control to which both parties have access, the board is of the opinion that neither standard of proof is applicable. "
• "in certain cases, such as the present one, this binary approach to proof standards can turn out to be overly formalistic and simplistic. On the one hand, since E7 originates not from the opponent but from a third party, it cannot simply be said that the evidence "lies within the sphere of the opponent". Hence, the higher standard of proof "beyond reasonable doubt" is not to be applied without further thought. On the other hand, the arguments put forward by the patentee (see point 3.2.1 (c) above) show that there is an imbalance between the parties in the access to E7 and thus the possibility to establish whether E7 is part of the prior art, so that it can also not simply be said that both parties had access to this evidence. Hence, the lower standard of proof "balance of probabilities" is also not to be applied without further thought. Already based on these basic considerations, neither standard appears to be suitable for application. The question then arises how to assess the evidence on the public availability of E7."
• "what matters, in plain language and as concluded in T 1138/20, Reasons 1.2.1, is the deciding body's conviction on the occurrence of an alleged fact, taking into account the particular circumstances of the case and the relevant evidence before it."
• "For the above reasons, the dispute between the parties about which exact standard of proof is to be applied to the present situation can be left undecided."
• "The board is convinced that, in view of the evidence E7 and E7d, the user manual E7 was made publicly available before the priority date of the patent, i.e. 19 May 2014, for the following reasons:" (follow detailed reasons)
• "The subject-matter of claim 1 is not novel in view of document E7 (Article 54(1) EPC). 
  
  
• Turning to an auxiliary erquest, and a further document E6: "It is undisputed between the parties that the standard of proof to be applied for assessing the public availability of E6 prior to the priority date of the patent is "beyond reasonable doubt"."
• "(a) The board is convinced beyond reasonable doubt that E6 forms part of the prior art under Article 54(2) EPC for the following reasons:

  (i) E6 is a handbook for a software with the title "AVL M.O.V.E System Control 2013". In the headnote of E6 are mentioned the date "M rz 2013", the reference "AT3732D" and the revision number "Rev. 02". In the delivery note E6c, page 2, the handbook E6 is identified as item "01.30.12" and described as "M.O.V.E SYSTEM CONTROL SOFTWARE, UG DOCU, AT3732D". According to E6cc, the handbook E6 was delivered to Daimler AG on 6 December 2013. While the actual version of the handbook E6 is not mentioned in the delivery note E6c, this missing information is to be found in E6e, the veracity and context of which is certified in E6f. In fact, as explained by the opponent during oral proceedings, according to E6e in conjunction with E6f, page A14, the version 02 of E6 was valid (in German in E6f: "g ltig ab") from 8 March 2013 to 09 December 2013, i.e. on the date of the delivery of E6 to Daimler AG. It follows that there is no doubt that a handbook E6, version Rev. 2, was delivered to Daimler AG before the priority date of the patent."

• 
  
• "E6 is a user manual intended to be delivered to all purchasers of an AVL M.O.V.E system and, as a user manual, only describes how to use a product already purchased by the customer. "
• "There is no presumption recognised in the jurisprudence for the existence of a non-disclosure agreement when it comes to the delivery of goods to one of many other end customers. On the contrary, the sale of a product to one of many other end customers, who generally wishes to dispose of the product freely (e.g., as the opponent stated during oral proceedings, the product will be used by an uncontrolled and unlimited number of employees of the customer), is considered to be a typical case of an unrestricted disclosure to the public. "
  
  
• The Board remits the case as the OD had concluded that E6 was no prior art.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0606/22 - Factory visit as (no) public prior use

Key points

• The alleged public prior use is a visit of a person to a plant.
• The Board, in machine translation: "In the present case, all evidence relating to the alleged obvious prior use was within the sphere of influence of the [former] opponent, who relied on a video made during a visit by one of its employees, the witness Mr. Traum, to Sante A. Kowalski Sp.j. The obviousness of the prior use therefore had to be proven without gaps by the opponent"
• The opponent had withdrawn the opposition in appeal before the summons. The proprietor and the opponent had both appealed the decision to maintain the patent in amended form. 
• "The opposition division based its finding on the obviousness of the prior use on the testimony of the witness Mr. Traum. In his testimony, the witness stated that during the visit to the Sante A. Kowalski Sp.j. premises on which the prior use was based, he was under no obligation with regard to what he had seen in the premises (see the minutes of the taking of evidence, page 2, last full paragraph). He further stated that he was not prevented from taking video recordings on the premises. He stated that he could not remember any instructions regarding confidentiality (see ibid., page 5, paragraphs 2 and 3). In addition, the witness stated that he had to sign at the access control to comply with hygiene and safety regulations (see ibid., page 2, paragraph 5)."
• "In its written submission of 3 June 2022, the patent proprietor submitted, through document A38, two versions of a "Guest Statement" from Sante A. Kowalski Sp.j., which are essentially identical with regard to points 3 and 9 on confidentiality, and which it claims had to be signed by every visitor to the premises of Sante A. Kowalski Sp.j. during the relevant period of the alleged prior public use.
• "2.5 Both "Guest Statements" appear to be consistent with the witness's statement regarding the access control in place during his visit to Sante A. Kowalski Sp.j. and the obligation of visitors to sign a declaration.
• 2.6 However, contrary to the vague statement of the witness, document A38 contains explicit provisions on confidentiality and a prohibition on video recordings on the premises without the consent of Sante A. Kowalski Sp.j. 

• "the submission of document A38 raises considerable doubts about the opposition division's finding that Sante A. Kowalski Sp.j. had no interest in confidentiality. Rather, confidentiality for visitors appears to have been standard practice. It is not apparent that an exception was made for certain groups of visitors, such as service technicians. The witness also only mentions access control in general terms.

  2.8 These doubts can no longer be verified in the present proceedings, since further investigations to clarify the facts necessarily require the cooperation of the opponent, given its influence over the evidence, who has, however, withdrawn its opposition. The board therefore concludes that, following the submission of document A38, there are sufficiently justified doubts as to the obviousness of the prior use (see T 1534/16, in particular point 1 of the reasons). "

• The opponent had withdrawn the opposition in 2024.

• The Board considers the public prior use to be not proven. 

• :" In its preliminary opinion of 2 August 2019 and 23 June 2020, the opposition division came to the preliminary view that, with the exception of the asserted obvious prior use, all objections raised up to that point in time were unlikely to be successful under the ground of opposition under Article 100(a) EPC. The novelty objection based on D15 was not admitted into the proceedings due to a lack of prima facie relevance. With regard to the objections newly filed with the written submissions in the appeal proceedings, in particular public prior use IV, the board sees no reason why these should be admitted into the proceedings.

  The Board therefore sees no reason to remit the case to the Opposition Division for continuation of the opposition proceedings under Rule 84(2) EPC.

  4. Accordingly, there are no grounds for opposition under Article 100 EPC which would manifestly preclude the maintenance of the patent in its granted form. "

• The patent is maintained as granted.

EPO 

The link to the decision and an extract of it can be found after the jump.

T1247/21 - The possible feature in the CPA is inventive

Key points

• The case is mostly about novelty and inventive step over a public prior use. The invention concerns a thermoforming packaging machine. The feature at issue is "a measuring unit (51, 42, 45) is provided which is configured to detect a contact between the upper tool part (7) and the lower tool part (3)".  (all quotes are machine translations).
• The opposition division [held that] knowledge of the source code [of the public prior use apparatus] was necessary in particular in order to recognize whether contact between an upper part of a tool and a lower part of a tool was being measured. Accordingly, feature K2 was not known from the public prior use.
• " The source code was not accessible to the customer Wolf (or other third parties) for factual and legal reasons. This was not disputed by the parties involved. "
• I take this to mean that the feature is actually present in the source code, but that the source code was not accessible to the customer. 
• The Board: "an alleged disclosure can only be considered implicit if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature was part of the disclosed subject matter (cf. RdB, ibid, IC4.3). It therefore depends on whether the skilled person, in view of the information available to him on the public prior use, specifically recognises the real possibility of configuring the measuring unit to detect contact between the upper and lower parts of the tool, and not whether such contact is hypothetically conceivable."
• The Board concludes after consideration of the facts of the case that the feature was not implicitly disclosed because a "reference run" would have been necessary, and alternatives were conceivable. 
• As a result, the Board is convinced that the skilled person cannot directly and unambiguously derive feature K2 from the public prior use "Power PAK RT 520".
• Regarding inventive step, "the parties unanimously formulated the technical task associated with the distinguishing feature K2 as improving or facilitating the adjustment of a known foil punch, for example, when changing tools. 
• Note, if the feature was actually present in the public prior use device, then there is no actual technical improvement over that device. 
• "The appellant [opponent] merely argued that the expert would like to prevent the control of a known foil punch from going beyond the contact point. However, this consideration alone does not provide any reason or indication for providing feature K2. In fact, there is no obvious reason for this in the prior art in the proceedings. "
• The feature is held to provide for an inventive step.

You can find the link to the decision and an extract of it after the jump.

T 0694/19 - Sale of the factory as prior art (?)

Key points

• The OD rejects the opposition. The opponent/appellant argues as follows: "The BAOCAL plant had been made available to the public by means of a sale. The respondent [proprietor] was the customer [buyer] having bought and received the BAOCAL plant from the legal predecessor of the appellant [opponent and was thus in a position to provide evidence on any non-disclosure agreement which might have prevented the public disclosure of the prior use BAOCAL. In the absence of this evidence, it had to be concluded that the prior use BAOCAL was rendered public by its sale to the respondent [proprietor]."
• The Board buys the argument. "According to well-established case law, a single sale is sufficient to render the article sold available to the public within the meaning of Article 54(2) EPC, provided that the buyer was not bound by an obligation to maintain secrecy, even if it is not proved that others also had knowledge of the relevant item (see Case Law of the Boards of Appeal, 10th edition, I.C.3.3.1). If the contracting parties had wanted to exclude the sale and delivery from public accessibility, they would have had to agree on a secrecy obligation."
• "In the present case, it was not shown that the parties to the contract were bound by any obligation to maintain secrecy. In particular, the respondent has not alleged, and there is no evidence on file, that the sales contract[]  comprised a non-disclosure agreement between the parties to the contract. In this context it is observed that the agreement terminating the above-mentioned contract (D1E) does not mention any obligation to keep the particulars of the BAOCAL plant secret in the future either - while several regulations and further obligations of the parties were agreed upon - after the contract had been explicitly terminated in 1993."
"Consequently, the acts of selling and delivering the plant rendered it available to the public. The mere assertion of the respondent that a production hall within which the calcining system is usually located is not open to the public is not sufficient to cast doubt on the public availability of the system sold from one company to the other. The fact that the respondent later decided to file a patent application cannot have an impact on whether or not the system was made public by the sale.
Consequently, in view of the available evidence, it must be concluded that the BAOCAL plant was made publicly available before the priority date and thus forms part of the prior art according to Article 54(2) EPC."
• Preliminary, I think a distinction can be made between the sale of a physical object as such and a business unit. A business unit includes both the tangible assets, the employees, and the IP, including the knowledge of how to operate the plant (with the note that in the absence of any contractual clause, both the seller and the buyer of a business unit would possess such trade secrets). Just as the way that the fact that inventor is free to talk about the invention constitutes no disclosure before he does so, the same principle could apply in the case of the sale of business units. 
• A different situation would be if plant equipment is sold (there is a company selling "second hand" chemical plants on a website, but that refers to a set of equipment, not to up-and-running plants, as I understand it). 
• Note, however, that the Board considers claim 1 to be inventive over the public prior use, so the analysis about the public availability of the plant is, strictly speaking, obiter.
• Comments are welcome!

EPO 

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

T 2440/16 - The Board hears witnesses

Key points

• Board 3.3.06 hears witnesses concerning the alleged public prior use.
The Board, in machine translation: "The opposition was based, among other things, on the obvious previous use of a machine of the type Oasys OCL 600/3 for the production of laminated plastic cards with the serial number 42010 (previous use "Hythe Offset"). This objection was based, inter alia, on video D1.6 showing this machine in operation but recorded after the priority date and the associated affidavits of Mr. Bridger (D1.1) and Mr. Lane (D2.1)." The OD consisted of four members.
• "Although the opposition division admitted numerous late-filed documents in connection with the prior use "Hythe Offset" into the proceedings, it did not consider the prior use of the machine in the mode shown in video D1.6 before the priority date to have been proven."
• "With its statement of grounds of appeal, the appellant submitted a further statement by Mr Bridger (D32) and a written comment (D33) on video D1.6 and submitted, among other things, that the public prior use "Hythe Offset" shown in D1.6 had been proven."
• "[The appellant/opponent] requested, in the alternative, that Adrian Lane, Richard Bridger, Elliot Lamb, Steven Walker and Colin Stokes be heard as witnesses should the Board consider dismissing the appeal "
• The Board decided to hear the five witnesses (!). Notably, as the OD consisted of four members, the Board consisted of five members.
• The hearing took place on 27-28 April. The witnesses were heard on 27 April, from 09:45 to 11:55, giving 70 pages of transcript. After a break until 13:20, the evidence was discussed with the parties. The Board deliberated from 14:45 to 15:20 and concluded that the alleged public prior use was proven. Novelty was then discussed. The Board concluded that the main request was not novel; the patentee subsequently withdrew the main request and some auxiliary requests. 
• There were no objections to the remaining auxiliary request, and the Board's decision contains no substantive reasoning. (minutes)
• 
  

EPO 

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

T 0670/20 - Non-analysis clauses and clinical trials

Key points

•  This post is from stock. 
• Documents D19 and D20 relate to phase IIa and phase IIb clinical trials in which patients received treatment .... involving administration of edoxaban for a period of up to ten days. Document D21 (see page 15, line 8) indicates that the edoxaban formulation under investigation during the clinical studies described in documents D19 and D20 [has all the features of claim 1 directed to the pharmaceutical formulation].
• The clinical trials were carried out before the filing date of the patent, the priority being invalid.
• "the appellants [opponents] relied [] on the provision of the tablets under investigation during the trials of documents D19 and D20 to the participating patients who were discharged from hospital before the end of the treatment period. This provision of the tablets to the patients discharged from the hospital before the end of the treatment was not contested by the respondent [proprietor].
• "The assessment of the ground of lack of novelty in view of the trials described in documents D19 and D20 therefore crucially depends on whether the participating patients who received the tablets are to be considered as members of the public who were free to dispose over the provided tablets and thus theoretically in a position to investigate the internal structure of the tablets. "
• " the clinical trials of documents D19 and D20 were carried out in accordance with the EMEA Guidelines for Good Clinical Practice (document D33). These guidelines explicitly require adherence to the prescribed protocol"
• "This set-up of the trials of documents D19 and D20 implies that the patients who decided to participate in the trials agreed, following their informed consent, to use the provided medication according to instruction or to return the unused medication. Accordingly, the participating patients who were provided with the tablets under investigation entered into a special relationship with the investigators of the trials and were with regard to the provided tablets not members of the public that could freely dispose over these tablets."
• "The Board acknowledges that the statements in documents D19 and D20 encouraging patients to discuss their participation in the trials indicates that the patients were not under a duty of confidence with respect to their participation to the trials and the information regarding the trial provided to them in that context. In fact, a duty of confidence regarding such information could be considered to constrain the patients in their ability to freely decide on participating in the trials on the basis of their informed consent, which would seem contrary to the above mentioned guidelines (see document D33, section 4.8). However, the Board finds no reason why the absence of the patients' duty of confidence with respect to the information relevant to their participation in the trials should affect the obligations of the participating patients regarding the use and return of the tablets provided to them, which resulted from their decision to participate in the trials as explained in section 4.3 above."
• "The Board notes, however, that the patients' agreement to use the provided medication according to instruction or to return the unused medication obliges the patients irrespectively of any sanction on non-compliance and therefore disqualifies the patients as members of the public with respect to the medication provided to them. The possibility of non-compliance to the instructed use and return of the tablets by the participating patients does not affect the essence of this agreement. Moreover, the appellants' estimation regarding the likelihood of full compliance remained speculative and therefore without consequence."
• Turning to inventive step (over other documents): " the Board considers that ...the problem to be solved may be formulated as the provision of a solid pharmaceutical composition comprising edoxaban as active ingredient which allows for excellent dissolution properties."
• " the cited prior art provided the skilled person with no reasonable expectation that the use of a combination of a sugar alcohol with pre-gelatinized starch or crystalline cellulose as a water-swelling additive allowed the dissolution of tablets comprising edoxaban to be still further enhanced by coating the tablet with a coating agent as defined in claim 1 of the main request. On the contrary, as indicated in document D23 tablet coatings were expected to have a detrimental effect on the dissolution properties or, in case of thin water-soluble polymers, to have at best no particular effect on dissolution rate of the tablets "
• "the Board agrees with the decision under appeal that the subject-matter of claim 1 of the main request also involves an inventive step."
  
  
• Kudos to the lawyer who added the clause in the protocol. 

EPO 

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

T 0098/18 - Sale to automotive company

Key points

• The alleged public prior use is the sale of 246 pieces of the component "APU ZB4418" by the company Knorr Bremse to Hyundai.
• The Board recalls that in the automotive industry, suppliers have a secrecy obligation regarding components co-developed with customers. " Insofern entspricht es nach Auffassung der Kammer den branchenüblichen Gepflogenheiten, dass Zulieferer, die Teile für ein in der Entwicklung befindliches (End-)Produkt eines Kunden liefern, zur Geheimhaltung verpflichtet sind." 
• It is the customer who decides when the component becomes public: " Allein der Auftraggeber des Entwicklungsprojekts als Kunde des Zulieferers, an den Teile geliefert werden, entscheidet darüber, ob, wann und wie er die unter Geheimhaltung entwickelten Teile Dritten zugänglich machen möchte (siehe dazu auch T 1847/12, Gründe 3.2). Ein vorbehaltloser Verkauf liegt erst vor, wenn der Käufer als Mitglied der Öffentlichkeit anzusehen ist (siehe z. B. T 1168/09, Gründe 4.2.2)." 
• The Board finds it relevant whether the customer Hyundai had used the components in the mass production of vehicles. "Die Geheimhaltung erlischt also mit der Lieferung für eine Serienproduktion, weil ab diesem Zeitpunkt die Teile dazu bestimmt sind, in Fahrzeuge für den Verkauf eingebaut zu werden und damit der Öffentlichkeit zugänglich gemacht zu werden (siehe T 1168/09, Gründe 4.2.3). Ab dann kann davon ausgegangen werden, dass die Teile den Bereich der gemeinsamen Entwicklungssphäre verlassen haben und die Möglichkeit der Einsichtnahme für Dritte im Sinne der von der Beschwerdeführerin angeführten Rechtsprechung bestand." 
• The critical moment appears to be " sogenannte Serienfreigabe' :   "Eine Verwendung durch den Kunden für dessen Serienproduktion - z. B. im vorliegenden Fall bestimmte Fahrzeuge - erfolgt typischerweise erst dann, wenn durch Tests beim Kunden nachgewiesen ist, dass die gelieferten Teile "in Serienqualität" auch für die Verwendung in einem Serienprodukt auf Kundenseite geeignet sind (sogenannte Serienfreigabe)." 
• Based on the evidence on file, the Board found the use in mass production by Hyundai not proven.
• The case is interesting, but I'm not entirely convinced that approval for mass production, being an act completely internal to Hyundai (it seems), could trigger the prior art status.
• 
  
• EPO T 0098/18 

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

T 2028/16 - New evidence prior use in appeal

Key points

• The Board admits new evidentiary documents which support the public prior use that was already asserted before the OD which were filed with the Statement of grounds. The reason is that the OD had found, after a witness hearing, that the devices at issue were delivered to the armies of Netherlands and Italy (without secrecy agreement, according to the OD) before the priority date, but that it was not proved that these devices exhibited a specific feature.
• The filing of the new documents "ist somit bei der nächstmöglichen Gelegenheit erfolgt und ist auch inhaltlich als sachdienliche Reaktion auf die Schlussfolgerung" of the OD.
• The documents are furthermore prima facie highly relevant to show that the prior use devices exhibited the feature at issue.
• Moreover, the new documents do not involve a new case. “Durch das Einreichen dieser Beweismittel entsteht kein sachlich bzw. patentrechtlich gänzlich neuer Streitgegenstand, sondern es werden lediglich weitere Beweismittel für die Behauptung vorgelegt, dass 1998 und 1999 Periskope PERI-RTNL-80 mit zugehörigen Absenkvorrichtungen an die deutsche Bundeswehr geliefert worden seien, wie die Beschwerdeführerin und die Zeugen im erstinstanzlichen Verfahren behauptet haben.”
  
  
• The Board does no doubt that the weapon system at issue was delivered to the armies without secrecy agreement. However, this does not amount to a public prior use, according to the Board (contrary to the OD), because military weapon systems are typically not accessible to the general public.
• “Die Auslieferung der Panzerhaubitzen mit dem Periskop PERI-RTNL-80 und der zugehöriger Absenkvorrichtung ohne Vereinbarung einer Geheimhaltungspflicht führt für sich genommen noch nicht zur Offenkundigkeit. Die Annahme einer offenkundigen Vorbenutzung durch die Auslieferung setzt vielmehr eine hinreichende Wahrscheinlichkeit voraus, dass beliebige Dritte und damit auch Fachkundige das Periskop der Panzerhaubitzen untersuchen und dadurch Kenntnis von den konstruktiven Merkmalen der dort eingesetzten Optikaufnahme erhalten konnten. Nach der Lebenserfahrung sind Waffensysteme wie Panzerhaubitzen der Öffentlichkeit nicht zugänglich und werden auch zur Wahrung von militärischen Geheimhaltungsinteressen seitens des Militärs nicht öffentlich gemacht (siehe ebenso z. B. T 1069/15”).
• The Board finds that soldiers have a secrecy obligation and the weapon system was not accessible to the public. So the delivery to the army was not a public prior use.
• 
  

T 2028/16 - link

decision text omitted.

T 0483/17 - Don't forget the rejoinder

 Key points

• The OD rejected the opposition. The Board finds the public prior use PU-1 to be sufficiently proven. The public prior use was in the sphere of the opponent and must be proven up to the hilt, but "this does not mean that the opponent has to provide each and every theoretically possible piece of evidence. Instead, it is sufficient that the evidence put forward convinces the Board."
• The Board considers claim 1 of the Main Request to be not novel and turns to AR-1 filed with the Appeal Reply Brief of the patentee as respondent. 
• The opponent submits an inventive step attack starting from the (now proven) prior use during the oral proceedings. 
• “The appellant [opponent] raised an objection of lack of inventive step starting from prior use PU1 at the latest possible opportunity, namely at the end of the oral proceedings before the Board. Auxiliary request 1 was filed by the respondent with its reply to the grounds of appeal and it corresponds to auxiliary request 1 of the opposition proceedings. It was therefore known to the appellant long before the oral proceedings in the appeal proceedings.”
• “The fact that the objection had already been put forward in opposition proceedings does not imply that it is part of the appeal proceedings. It instead proves that the objection could (and should) have been raised earlier in the appeal proceedings. There are no exceptional circumstances which justify the objection being raised only at this late stage of the appeal proceedings, and the appellant has not put forward any cogent reasoning for admitting this objection either.”
• So, attacks do not carry over from the first instance proceedings but need to be repeated in appeal.
• Moreover, the appropriate time for submitting attacks in reply to requests filed with an Appeal Reply Brief of a patentee as respondent is the appellant's rejoinder, which can be found only in the Explanatory  Notes to the RPBA. 
• “Furthermore, although the objection is based on documents which are part of the appeal proceedings, it constitutes a completely new line of attack, which took both the respondent and the Board by surprise and which cannot reasonably be expected to be dealt with at such late stage of the proceedings. The Board therefore decided not to admit the inventive-step objection starting from the prior use PU1 into the proceedings”

2. Main request - Novelty in view of public prior use

2.1 Since the sale and delivery of five roller bearings from the appellant/opponent (SKF) to a third party (Hansen Transmissions) is completely out of the sphere of the respondent/patent proprietor (NTN Corp.), according to the case law of the Boards of Appeal, proof has to be provided "up to the hilt". The determination of the prior use thus requires that the facts giving rise to the prior use must be established without gaps (see T 472/92, OJ 1998, 161, point 3.1 of the Reasons); however, this does not mean that the opponent has to provide each and every theoretically possible piece of evidence. Instead, it is sufficient that the evidence put forward convinces the Board.

On the other hand, a prior use has not been sufficiently proven if the proprietor successfully pointed out any inconsistencies or drew attention to any gaps in the opponents chain of proof (see T 472/92, op. cit.).

2.2 Applying these principles, the Board considers it established that the alleged prior use took place.

[...]

T 0072/16 - Tacit secrecy agreement

Key points

• This case is about proofing a tacit secrecy agreement in opposition. The OD heard a witness on the matter. 
• “The opposition division arrived at the conclusion that on the basis of the evidence on file and the testimony of the witness, Mr. Krajewski, Aspen Aerogels, Inc. (hereinafter: Aspen) shipped 48 pipe sections manufactured as shown in the video D11 to Technip France (hereinafter: Technip) on 27 January 2005 and that Technip received and used them without being bound by confidentiality. According to the testimony, [seller] Aspen was bound by confidentiality, but it was not reciprocal. The opposition division was convinced that neither an express confidentiality agreement nor an implicit obligation of confidentiality existed.”
• “The board does not question the opposition division's conclusion insofar as Aspen shipped 48 pipe sections manufactured as shown in the video D11 to Technip on 27 January 2005 and that Technip received and used them. This statement appears also not to be contested by the respondent/proprietor. However, the board considers that, during the oral proceedings before it, the respondent has convincingly demonstrated on the basis of documents D12, D13, D14 and the testimony of Mr. Krajewski, that said sale and shipment of 48 panels on 27 January 2005 was carried out under an explicit non-disclosure-agreement binding both Aspen and Technip or that there was at least an implicit confidentiality agreement, and that this has not been disproved by the appellant [opponent].”
• The Board: “there is no reason to apply a standard of proof stricter than that of "balance of probabilities". According to the established jurisprudence of the boards of appeal, the stricter standard of "beyond reasonable doubt" should be applied when all the evidence in support of the alleged prior public use lies within the power and knowledge of the opponent, while the patent proprietor has barely any or no access to it at all []. However, neither has it been established in the present case that all the evidence for the alleged prior use lies within the power and knowledge of the appellant, nor is there any evidence before the board that Aspen is a company belonging to a group the opponent is part of or any indication of similar circumstances that would justify that Aspen be assimilated to the appellant.”
• The Board considers it proven that the shipped pipe sections were " a development product, a prototype supplied in the course of an ongoing collaboration programme between these two partners." The documentary evidence indicates an NDA. The witness testimony does not refute this.
• “the board does not doubt the witness's credibility or whether the testimony corresponds to the witness's true recollection. However, the probative value of the statements concerning the existence of a NDA []is not persuasive in this respect when compared to the evidence on file, in particular with regard to the confidentiality clause in D13, page 2. [...] It is not surprising that the witness, an engineer, not an IP specialist, was not aware of all the confidentiality requirements binding the other party, as also stated in document D12. This is also consistent with his declarations on his role in the project [...]”

EPO T 0072/16 - link

Summary of Facts and Submissions

I. The opponent filed an appeal against the decision of the opposition division on the amended form in which European patent No. 2 293 920 ("the patent") can be maintained.

The opposition division admitted the following evidence in support of an alleged prior use:

D11: Demonstration video of Aspen Aerogels Inc.;

D11a: Signed declaration by Mr Mark Krajewski;

dated 7 October 2013

D12: Signed declaration by Mr Mark Krajewski;

dated 30 October 2014

D13: Product Assembly Specification of Aspen

dated 22 November 2004

D14: Bill of Lading from Shipco Transport

dated 27 January 2005.

The opposition division also heard a witness (Mr Mark Krajewski). The minutes of the taking of evidence by hearing the witness will be referred to as document "MMK" in what follows.

II. The oral proceedings before the board were held on 20 February 2020.

III. The appellant (opponent) requested that the decision under appeal be set aside and the patent be revoked.

The respondent (patent proprietor) requested that the appeal be dismissed (main request), or that the decision under appeal be set aside and the patent be maintained in amended form on the basis of the sets of claims filed as first and second auxiliary requests in response to the statement of grounds of appeal by letter of 13 July 2016.

IV. In the decision under appeal the opposition division evaluated the evidence related to the alleged public prior use as follows:

"[2.2.1] Mr. Krajewski's testimony was free of contradictions. He acknowledged gaps in his memory, which is natural after more than 10 years. He was nevertheless able to recite the events around the manufacture of the pipe section from his own immediate experience. He was part of the team manufacturing the 48 pipe sections later shipped to Technip, France according to D14, and he was the videographer of D11. The opposition division therefore considered his testimony to be credible.

T 0905/17 - No need for a hint in the CPA

Key points

• This opposition appeal deals with inventive step.
• “The opposition division dismissed this line of argument [of the opponent] by pointing out that there was no "hint in [the closest prior art] document D4 to suppress the liner (3) and then to search for appropriate material in the prior [sic] for the pressure armours (5,6) then subjected to corrosion"”
• “The board does not find this reasoning [of the OD] persuasive because the skilled person starting from one element of the state of the art [i.e. starting from the closest prior art] and faced with the need to solve a given problem [i.e. the objective technical problem] does not necessarily need a "hint" associated with that element. Otherwise, it would never be possible to establish a lack of inventive step based on the object of a prior public use, which usually does not come with any hints. In the absence of a hint, the skilled person might still take the steps leading to the claimed subject-matter on the basis of their common general knowledge or documents belonging to the state of the art that explicitly teach a solution to the problem to be solved.”
• However, the Board still concludes that the opponent “has shown that the skilled person starting from the teaching of document D4 and wishing to simplify the design of the pipe disclosed in that document could have reached the subject-matter of claim 1. However, they have not established in a persuasive manner that the skilled person would have done so. Their argumentation appears to be based on hindsight.”

EPO T 0905/17 -  link

3.2.3 Obviousness

The appellant [opponent] argued that the skilled person contemplating the pipe of Figure 2 of document D4 would have noted that its structure was repetitive: there is a first structure formed by layers 1 and 3 and a second structure formed by layers 5, 6 and 9.

FORMULA/TABLE/GRAPHIC

The argument goes on to say that the skilled person trying to simplify the pipe design would have eliminated this repetition of structures by removing both the carcass 1 and the inner liner 3. Sheath 9 would then replace inner liner 3 and layers 5 and 6 would play the role of the carcass 1. As they are in direct contact with the fluid to be transported, said layers would be unable to bear the radial force exerted by the internal pressure of the fluid. However, document D5 provides a solution that would have led the skilled person in an obvious way to a pipe according to claim 1.

The opposition division dismissed this line of argument by pointing out that there was no "hint in document D4 to suppress the liner (3) and then to search for appropriate material in the prior [sic] for the pressure armours (5,6) then subjected to corrosion" (see page 5, first paragraph, of the decision under appeal).

T 2659/17 - OD should have heard witness of other party

Key points

• The opposition is based on alleged public prior use by the opponent selling certain installations to two (or three) customers. The question was whether there was an implicit secrecy agreement. The opponent files three declarations (of employees) stating that there was no secrecy agreement and offers the persons making the declarations as witnesses. The OD considers the prior use to be proven, without hearing the witnesses and maintains the patent in amended form. The patentee appeals. The opponent withdraws the opposition during the appeal, but the Board still has to decide on the appeal.
• The Board concludes that the OD should have heard the witnesses and has violated the right to be heard of the Patentee by refraining from doing so.
• The puzzling aspect is that the Board's decision nowhere states that the Patentee had requested the hearing of the witnesses (the minutes of the OD neither state so). So there is a violation of the right to be heard of patentee by not hearing the witnesses offered by the opponent and (presumably) without any request of the patentee to hear those witnesses.
• The Board: “Wie in der Entscheidung T 474/04 bereits von der Beschwerdekammer festgestellt wurde, hat eine Versicherung an Eides statt eine geringere Beweiskraft als eine Zeugenaussage []. Daher soll eine Entscheidung nicht auf der Versicherung an Eides statt allein beruhen, sondern ist die Person, die die Erklärung abgegeben hat, als Zeuge zu vernehmen, sofern dies der Beteiligte anbietet (vgl. ,,Richtlinien für die Prüfung im Europäischen Patentamt" in Kapitel E-IV.1.2). [note, GL E-IV 1.2 actually state: “If the alleged facts are contested by the other party, the opposition division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. ”
  Dies gilt im vorliegenden Fall umso mehr, da der Inhalt der Versicherungen an Eides statt von der Inhaberin in Frage gestellt wurde und eine Zeugeneinvernahme der angebotenen Zeugen eingefordert wurde. [Note, the Board here does not state which party had requested the hearing of the witnesses]
  Daher hätte die Einspruchsabteilung die Zeugen laden und vernehmen müssen - nicht zuletzt um der Inhaberin die Möglichkeit zu gewähren, den Inhalt der Erklärungen an Eides statt überprüfen und eventuell widerlegen zu können.
  Durch die Verwehrung der Zeugenbefragung wurde die Inhaberin darin behindert, das letztlich entscheidende Beweismittel zu entkräften. Dies ist umso gravierender, da die Vorbenutzungen durch die Einsprechende erfolgte und somit die Beweismittel dafür somit weitgehend der Verfügungsmacht und dem Wissen der Einsprechenden unterlagen.”
• In T 474/04 "the patent was revoked on the basis of contested submissions made in declaration D14, in spite of Respondent 02 [opponent] expressly offering, and the Appellant [Patentee] expressly requesting, that its author be heard." (r.4, r.5). As said, it's not clear to me if in the present case, the patentee had expressly requested that the author of the declaration (affidavit) be heard as a witness by the OD. However, such a request of the 'respondent to the affidavit' appears in fact not necessary in view of the GL. The underlying consideration here is that the party formally requesting the hearing of the witnesses must make a deposit for the reimbursement of the expenses of the witnesses (Rule 122(1) EPC; the amounts at issue are not insignificant). Employees of the opponent that are heard as a witness upon request of the patentee may be less inclined to waive their right to compensation (GL E-IV 1.9).
• According to the GL, the party submitting the affidavit must offer the person making the affidavit as a witness; otherwise, "the opposition division will not pursue this evidence further" if the other party contests the facts that are evidenced in the affidavit (GL E-IV 1.2). A question could be whether ‘offering’  the witness is the same as ‘requesting’ the hearing of a witness in the sense of Rule 117 EPC (and Rule 122(1) EPC).
• As noted with approval by the Board in T 474/04, r.7, 8, GL E-IV 1.2 recommend that if "the alleged facts are contested by the other party, the Opposition Division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party".
• The issue in the present case then boils down to a conclusion of the Board that the OD had not correctly applied the established case law that a finding of fact can not be based solely on a contested affidavit. Whether this error of the OD is a substantial procedural violation is a separate matter. However, the OD appears to have misapplied a rule of evidence law rather than Art. 113(1) EPC.

Tacit secrecy agreement

• The Board notes that a tacit secrecy agreement can exist due to the particular circumstances of the sale of a device.
• The Board notes that in the present case, the sold devices were individually built for the customers and were significantly adapted for the specific customers (r.14.1). “Derartige individuell für einzelne Kunden angefertigte Maschinen können im Einzelfall der impliziten Geheimhaltung unterliegen, da ein spezielles Vertrauensverhältnis zwischen Käufer und Verkäufer bei der individuellen Planung und maßgeschneiderten Fertigung der Maschine besteht.” 
• The Board then notes that the construction drawings were marked as 'confidential'. In this way, “Es ist somit nicht eindeutig und zweifelsfrei durch die Einsprechende nachgewiesen worden, dass die Lieferung der Maschinen an die Firmen Faigle und Hauri nicht unter einer Geheimhaltungsvereinbarung erfolgte. Die beiden Käufer der Maschinen können daher nicht ohne Zweifel als Öffentlichkeit angesehen werden, so dass die Vorbenutzungen nicht zwingend öffentlich erfolgten.”. 
• The Board notes that the standard of proof is 'up to the hilt' because the alleged prior use was in the sphere of the opponent (r.9). The Board then concludes that: “So lange hier jedoch noch ein Zweifel besteht, ist angesichts des anzusetzenden Beweismaßstabes davon auszugehen, dass die Firmen Faigle und Hauri mit ihren Mitarbeitern nicht als Öffentlichkeit gelten können, so dass der Verkauf Faigle und der Verkauf Hauri keinen Stand der Technik nach Artikel 54(2) EPÜ darstellen.”.
• The Board does not expressly discuss T2037/18, but possibly it can be said that the burden of proof for showing the absence of a tacit secrecy agreement was shifted to the opponent after the Patentee had successfully made a prima facie case that there was a tacit secrecy agreement based on the construction drawings of the sold device being marked confidential (and the customized nature of the sold equipment).
• I wonder if the customizations do perhaps point to confidentiality obligation of the builder/seller of the equipment rather than the customer, whereas T2037/18 assumes a confidentiality obligation of the buyer (I assume that the patented features were common to the sold devices, i.e. not part of the customisations or client requests and that the patented features were developed by the seller independently of the customers).

EPO T 2659/17 - link

Sachverhalt und Anträge

I. Die Beschwerdeführerin (Patentinhaberin) legte Beschwerde gegen die Zwischenentscheidung der Einspruchsabteilung ein, wonach das Streitpatent sowohl in der erteilten Fassung, als auch in geänderter Fassung gemäß Hilfsantrag 1 und 2 nicht patentfähig war, jedoch das Streitpatent auf Basis des Hilfsantrags 4 in geänderter Fassung aufrechterhalten wurde.

a) Insbesondere hatte die Einspruchsabteilung zwei geltend gemachte offenkundige Vorbenutzungen als bewiesen angesehen und entschieden, dass der Gegenstand des Hauptantrags nicht neu gegenüber diesen Vorbenutzungen sei.

b) Zum Beweis der offenkundigen Vorbenutzungen reichte die Einsprechende im Rahmen des Einspruchsverfahrens eine Reihe schriftlicher Dokumente ein und bot die Vernehmung von mehreren Zeugen an. Zudem wurden eidesstattliche Versicherungen der angebotenen Zeugen eingereicht.

Entscheidungsgründe

1. Die Einsprechende hat ihren Einspruch zurückgenommen.

1.1 Da die Beschwerde von der Patentinhaberin gegen die Entscheidung der Einspruchsabteilung eingelegt worden ist, hat diese Rücknahme keinen Einfluss auf die Anhängigkeit dieses Beschwerdeverfahrens. Die Kammer muss daher die Entscheidung der Einspruchsabteilung inhaltlich prüfen.

1.2 Allerdings hat die Rücknahme des Einspruchs durch die Beschwerdegegnerin zur Folge, dass die Einsprechende hinsichtlich der Sachfragen nicht mehr am Beschwerdeverfahren beteiligt ist. Da kein Antrag auf Kostenverteilung vorliegt, hat die Einsprechende ferner auch keinen Parteistatus mehr (T 789/89, ABl. EPA 1994, 482).

Zulässigkeit der Beschwerde

2. Die Zulässigkeit einer Beschwerde ist dann gegeben, wenn die Beschwerde und die Beschwerdebegründung den Erfordernissen der Artikel 106 - 108 EPÜ, sowie der Regel 99 EPÜ entspricht.

2.1 Die Einspruchsabteilung hatte den Hauptantrag zurückgewiesen, da der Gegenstand des Anspruchs 1 nicht neu gegenüber den beiden geltend gemachten Vorbenutzungen war.

2.2 Die Beschwerdeführerin hat in der Beschwerdebegründung die öffentliche Zugänglichkeit der beiden geltend gemachten Vorbenutzungen in Frage gestellt. Entsprechend wären die beiden Vorbenutzungen kein Stand der Technik gemäß Artikel 54(2) EPÜ und könnten daher im Gegensatz zur Entscheidung der Einspruchsabteilung auch nicht neuheitsschädlich sein, bzw. die erfinderische Tätigkeit in Frage stellen.

2.3 Die Beschwerdebegründung enthält somit zumindest eine vollständige Argumentationslinie, warum die Entscheidung zum Hauptantrag aus Sicht der Beschwerdeführerin aufzuheben ist und erfüllt somit die Erfordernisse der Regel 99(2) EPÜ.

2.4 Die Beschwerde ist daher zulässig.

Zulässigkeit des Einspruchs

3. Die Zulässigkeit eines Einspruchs ist dann gegeben, wenn die Einspruchsschrift den Erfordernissen der Artikel 99 und 100 EPÜ, sowie der Regel 76 EPÜ entspricht.

T 1476/14 - Challenging witnesses

Key points

• The patentee appealed the decision revoking the patent. The OD had held a witness hearing about the alleged public prior use at a trade fair (of two witnesses), considering it proven and novelty destroying for the (then) main request. The patentee tries to challenge the witness hearing in appeal. The Board is not very open to the objections. The small inconsistencies between the testimonies of the two witnesses are not prejudicial. The fact that the witnesses had met with the representative of the opponent at the evening before the hearing, is neither prejudicial because the mere possibility of coordination of the testimonies is not sufficient. 
• The Board: "Wenn aber schon allein die bloße Möglichkeit einer vorherigen Abstimmung [between witnesses] genügte, um den Inhalt der späteren Aussagen zu disqualifizieren, könnte kaum je eine Zeugenaussage Berücksichtigung finden. Maßgeblich ist daher vielmehr, ob die Zeugenaussagen als solche einen konkreten Verdacht dafür liefern, dass die Zeugen sich zuvor untereinander abgestimmt haben." 
• Moreover, the patentee pointed out (in the appeal) an inconsistency in the earlier testimonies, but admitted that he had refrained from pointing it out during the witness hearing because the witnesses could then have adapted their testimony. The Board, in a rather German sentence: "Aus einem solchen eigenen Versäumnis kann die Beschwerdeführerin in der Beschwerdeinstanz jedoch schon zum einen deswegen nichts mehr für sich herleiten, weil sie sich insoweit freiwillig ihrer Rechte begeben hat, wohl auch weil sie mit einer derartigen Fragestellung sogar nach ihrem eigenen Verständnis eine Zeugenaussage herausgefordert hätte, die zu ihren eigenen Lasten gegangen wäre." 
• In addition, the Board does not admit a request (filed for the first time in appeal) with a feature that aims to provide novelty over the public prior use. In particular because this would necessitate a new witness hearing. 

EPO T 1476/14 -  link

Hauptantrag

2. Neuheit gegenüber der offenkundigen Vorbenutzung ANPIC

2.1 Von der Einspruchsabteilung wurde entschieden, dass der Gegenstand des Anspruchs 1 des Hauptantrags unter anderem im Lichte der Vorbenutzung "ANPIC" nicht neu sei. Bei dieser Entscheidung stützte sich die Einspruchsabteilung auf die während der mündlichen Verhandlung gemachten Zeugenaussagen der Herren Rodriguez Lee, Giorgianni und Fierro Rodriguez.

T 2068/15 - Public prior use, secrecy

Key points

• In this extensive opposition appeal decision about an alleged public prior use of multilayer films for car parts, one of the issues is whether there was a tacit secrecy agreement.
• " It can be accepted that, if joint development projects are agreed, they often are - explicitly or implicitly - combined with an obligation of confidentiality. In the case at hand, the board does however not see enough indications from which it could be convincingly concluded that there existed a joint development project between opponent 2 and Nissan and, linked to that, confidentiality as regards the nature (composition and layer sequence) of the films". " the 37 films [that were supplied] were not the only films produced by opponent 2 but were part of in total 12600 parts 93893 8Z400 of production run 12 (D41) as shown by the opponents. The production of such a large number is not indicative of test purposes either." 
• The Board also finds that the supplied multilayer films had the composition of claim 1, based on extensive evidence (including three experimental reports from research institutes). 
• The Board also discusses analysability. " The board acknowledges that a precondition for the chemical composition of a product to be prior art is that it can be analysed by the skilled person (G 1/92[]). This question therefore has to be examined in the present case. The Board finds that the skilled person could have determined the composition of the supplied films based on a combination of technologies including IR, 1H and 13C NMR, and pyrolysis GC-MS.
  
  

EPO T 2068/15 -  link

Reasons for the Decision

Main request (claims as granted)

2. Lack of novelty - alleged public prior use

2.1 Both opponents contested novelty in view of a public prior use of films which they said had a composition as defined in claim 1 and were part of the state of the art before the date of filing of the patent in suit (Article 54(2) EPC).

2.2 To substantiate a public prior use, it must be established when the prior use occurred, what was used, and the circumstances relating to the alleged use (T 328/87, headnote).

2.3 Date of the alleged public prior use

2.3.1 In February 2002, Kay Automotive Graphics, who is opponent 2 in the present proceedings, received a specification tender dated 25 February 2002 from Nissan to initiate production of part numbers 93892-8Z400 and 93893-8Z400 (D26). On 29 September 2004, a job ticket was issued to initiate production run number 12 of 12600 of each of these two part numbers for the customer Nissan (D41). Once produced, the parts were placed at inventory location WHB-703-G within opponent 2's facility (D55 and D56).