T 1589/13 - Rules of evidence and burden of proof

Key points

• In this opposition appeal case, the Board confirms that also for internet disclosures, " standard of proof is generally the balance of probabilities". " By way of exception, the standard of proof may be more stringent, for example in opposition (appeal) proceedings where only one party, usually the opponent, has access to information, e.g. concerning an alleged public prior use. The difficulty of the other party to gain access to information concerning such public prior use, and if they are the proprietor, of proving a negative, has caused the case law to tend in this case toward expecting the public prior use to be proved beyond reasonable doubt".
• The Board also explains the shifting of the burden of proof. " The burden of proof generally lies with the one who affirms. In the specific case of the documents E1, E2 and E4, the burden of proof thus rested with the (former) opponent. If the opposition division or the board, however, is satisfied that, on the balance of probabilities, these citations constitute prior art, it is then up to the appellant/patent proprietor to prove otherwise." .
• About the publication date of brochures: " In view of their nature as advertising brochures (see in particular the last sentence of the disclaimer on the last page of documents E1 and E4) and of the fact that the priority date is 1.5 to 5.5 years after the alleged creation dates, it can be presumed that these brochures have been made available to interested circles, without any obligation to keep them secret, in the months following the dates indicated on the cover, which is clearly before the date of priority of the contested patent" (E1 and E4 are also internet publications). 
• About admissibility of the main request under Article 12(4) RPBA: " document E7, which the opposition division finally found decisive for refusing auxiliary request 7 and revoking the patent, was submitted only one month before the date of the first-instance oral proceedings. In view of the above, the board does not see any reason why the patent proprietor should have filed the present main request already during the first-instance proceedings" 

EPO T 1589/13 - link

Reasons for the Decision

1. Prior art status of documents E1, E2 and E4

1.1 While it is not generally disputed that documents E1, E2 and E4 are publications by DIAB, it is contentious whether these documents were made available to the public before the priority date and thereby meet the criterion for forming part of the state of the art under Article 54(2) EPC. As to the required level of proof, the appellant relies on decisions T 1134/06 and T 1875/06, according to which it had to be established beyond reasonable doubt that an alleged publication on the Internet was in fact made available to the public before the relevant date.

1.2 On this issue, the board notes that the jurisprudence of the boards of appeal did not generally follow the findings in decisions T 1134/06 and T 1875/06 that the standard of proof for Internet publications should be higher than for prior art in general. Rather, it was repeatedly confirmed that the EPO standard of proof is generally the balance of probabilities (see for example decision T 2227/11, cf. Case Law of the Boards of Appeal of the EPO, 8th edition 2016, III.G.4.3.1). By way of exception, the standard of proof may be more stringent, for example in opposition (appeal) proceedings where only one party, usually the opponent, has access to information, e.g. concerning an alleged public prior use. The difficulty of the other party to gain access to information concerning such public prior use, and if they are the proprietor, of proving a negative, has caused the case law to tend in this case toward expecting the public prior use to be proved beyond reasonable doubt (see also Case Law of the Boards of Appeal of the EPO, 8th edition 2016, III.G.4.3.2).

However, in the specific case of documents E1, E2 and E4, which were all produced by a third party, the patent proprietor and the (former) opponent both potentially had equal access to the relevant information, notably concerning the authenticity of their publication dates and their content. Accordingly, the board sees no reason to deviate from the standard of proof of balance of probabilities.

1.3 Moreover, the burden of proof generally lies with the one who affirms. In the specific case of the documents E1, E2 and E4, the burden of proof thus rested with the (former) opponent. If the opposition division or the board, however, is satisfied that, on the balance of probabilities, these citations constitute prior art, it is then up to the appellant/patent proprietor to prove otherwise.

1.4 In that respect, it is observed that documents E1, E2 and E4 are advertising brochures which apparently contain respective creation dates (E1: "Rev C 11.19.02", E2: "9.10.01", E4: "05.12." and "© 2006"). In view of their nature as advertising brochures (see in particular the last sentence of the disclaimer on the last page of documents E1 and E4) and of the fact that the priority date is 1.5 to 5.5 years after the alleged creation dates, it can be presumed that these brochures have been made available to interested circles, without any obligation to keep them secret, in the months following the dates indicated on the cover, which is clearly before the date of priority of the contested patent. This presumption is supported by the affidavit E8 and the invoice E9 for printing document E4. Although the appellant expresses doubts regarding the different formats used for the date stamping on the documents, regarding the question of whether the documents remained unaltered after the date stamping and as to the value of the affidavit E8, these submissions are not supported by conclusively presented facts. Consequently, they are less convincing.

1.5 In view of the above and on the balance of probabilities, the board sees no reason to overrule the opposition division's decision acknowledging the prior art status of documents E1, E2 and E4. Consequently, these documents belong to the state of the art according to Article 54(2) EPC.

2. Admissibility of document E7

2.1 The opposition division decided to admit document E7 into the proceedings in view of its prima facie relevance (cf. impugned decision, Reasons 12). It is not apparent that the opposition division exercised its discretion under Article 114(2) EPC according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (cf. G 7/93, OJ EPO 1994, 775). Consequently, the admission of document E7 into the opposition proceedings is not to be objected to. This is all the more true in view of the principle of ex-officio examination under Article 114(1) EPC. According to this provision, the opposition division examines the facts of its own motion, as an administrative instance and in accordance with the extent of the opposition under Rule 76(2)(c) EPC (cf. G 9/91, OJ EPO 1993, 408, Reasons 10). In doing so, it is not restricted to the facts, evidence and arguments provided by the parties.

2.2 The board additionally observes that the framework of the European Patent Convention does not provide a legal basis for excluding, at the appeal stage, a prior art document which was correctly admitted into the first-instance proceedings. It has to be emphasised that it is the primary function of an appeal to give the losing party the possibility of having the correctness of the first-instance decision judicially reviewed. In the case at hand, the impugned decision deals, inter alia, with the issues of novelty and inventive step in view of prior art document E7. The correctness of these findings cannot be reviewed without taking into consideration the teaching of this document.

For these reasons, document E7 forms part of the present appeal proceedings.

3. Main request - admissibility

3.1 The present main request was filed as auxiliary request 8 together with the appellant's statement setting out the grounds of appeal, allegedly in order to overcome specific objections raised by the opposition division during the oral proceedings against the auxiliary requests then on file.

3.2 Regarding the issue of its admissibility, it is observed that under Article 12(1) and (4) RPBA, the board has to take into account everything presented by the parties, inter alia in the notice of appeal, the statement of grounds of appeal and any written reply of the other party or parties, if and to the extent that it relates to the case under appeal and meets the requirements set out in Article 12(2) RPBA. The board, however, has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.

3.3 Turning to the opposition proceedings of the case at hand, it is observed that in its preliminary assessment, the opposition division had considered that documents E1, E2 and E4 did not form part of the state of the art and that the opposition could therefore be "inadmissible". Moreover, document E7, which the opposition division finally found decisive for refusing auxiliary request 7 and revoking the patent, was submitted only one month before the date of the first-instance oral proceedings. In view of the above, the board does not see any reason why the patent proprietor should have filed the present main request already during the first-instance proceedings. Rather, this request constitutes an appropriate reaction to the impugned decision. It is therefore admitted into the appeal proceedings under Article 12(4) RPBA.

EPO case law 2017 highlights

What did 2017 bring us from the Boards? Some highlights.

• G 1/16 about disclaimers:  for 'undisclosed' disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and for 'disclosed' disclaimers the proper test is the gold standard disclosure test of G 2/10. 
• A successful petition for review, R 3/15.
• T 1852/13 abolished the "essentiality"  test as decisive for Article 123(2) EPC compliance of amendments that remove features from a claim. The holding that the "essentiality test" can not overrule the "gold standard" test, was followed expressly  in T 0046/15 [2.8.1] and T 1472/15 [2.3] and T 2095/12, [2.7] (all three of Board 3.2.04). 
• T 1138/12 wherein the Board did not admit a request to maintain the patent on the basis of any of the claims as granted that were considered allowable by the Board.
• T 0577/11  and T 1201/14 about transfer of priority. T 0577/11: an assignment of priority must be valid at the date of filing the later application. A later succession in title is not sufficient. T 1201/14 adds that this is the case even if retroactive assignment is possible under national law. 
• T 0488/16 (Dasatinib I) and T 0950/13 (Dasatinib II) about plausibility at the EPO. The Board held in Dasatinib I that it is "a conditio sine qua non" that it is shown that the technical problem underlying the invention was at least plausibly solved at the filing date. This requires technical evidence if the effect is "neither self-evident nor predictable or based on a conclusive theoretical concept". Dasatinib II is interesting in particular for the Board's dealing with plausibility of dependent claim 2. 
• J 0012/16 about transfer of a patent application. "The mention of the grant should not be published during the period for filing an appeal against a rejection of a request for transfer of the application." For some reason, this post attracts a lot of traffic on this blog. 
• T 0988/14 about the need for opponents to present inventive step attacks early, even if novelty is still to be decided on by the Board. "In particular, it is not justified to wait for the Board to come to a conclusion on novelty, [] for amending the Opponent's case."
• T 1463/11 (CardinalCommerce) about the "notional business person"  under the Comvik approach to inventive step. 
• T 2598/12 finding that there is no time bar to the requirement that a request filed during appeal proceedings must be properly substantiated. Unsubstantiated requests were likewise not admitted in T 2077/13, and T 1120/12.

Happy holidays

Blogging will be continued as of 2 January 2018.

T 2136/16 - No adjournment of oral proceedings

Key points

• This decision was given publication code [C] with reference to paragraph 8.
• The Board does not refer a question proposed by the proprietor to the Enlarged Board of Appeal because the question is not relevant for deciding the case. In particular, "the board did not base its findings on the term "alarm" on a new connotation or interpretation presented for the first time in the oral proceedings. " 
• The Board denied the proprietor's request for adjournment of the oral proceedings " in order to gather evidence as to whether the alleged connotation of the translated term "alarm" in [the translated prior art document] was consistent with the original term in D11."The board cannot accede to this request. It is based on the allegation that the word "alarm" disclosed in [the translation] was given a new connotation or interpretation, i.e. that the alarm is issued to the user, for the first time during the oral proceedings. This allegation is incorrect, as is evidenced by the fact that the decision under appeal is clearly based on the same interpretation of "alarm" as the present decision" . 
• The appeal was dismissed, the patent remained revoked.

EPO T 2136/16 -  link

6.3 Hence, the subject-matter of claim 1 lacks inventive step in view of D11 and the common general knowledge.

First auxiliary request - adjournment of the proceedings

7. As a first auxiliary request, the proprietor requested an adjournment of the oral proceedings in order to gather evidence as to whether the alleged connotation of the translated term "alarm" in paragraphs 24 and 25 of D10 was consistent with the original term in D11.

The appellant contested that the term "alarm" had an emotional connotation implying that it was directed to a human user. This alleged connotation was the basis of an argument raised by the respondents for the first time during oral proceedings before the board.

7.1 The board cannot accede to this request. It is based on the allegation that the word "alarm" disclosed in paragraphs [0024] and [0025] of D10 was given a new connotation or interpretation, i.e. that the alarm is issued to the user, for the first time during the oral proceedings. This allegation is incorrect, as is evidenced by the fact that the decision under appeal is clearly based on the same interpretation of "alarm" as the present decision, i.e. that the alarm of D11 "addresses the user of the device" (see Reasons, point 14.9). No other connotation was and is considered to be implied in the word "alarm". It follows from this and the findings on inventive step above that it was not during the oral proceedings that the word "alarm" was first given a new connotation or interpretation, i.e. that it implied an emotional communication directed to a human user.

7.2 Hence, the appellant's request for an adjournment of the oral proceedings cannot be allowed.

8. The appellant submitted the following question for referral to to the Enlarged Board of Appeal:

"In an argument raised for the first time during oral proceedings before a Board of Appeal, is it allowable to form an opinion of the presence of direct and unambiguous disclosure with regard to a translated term in a foreign language prior art document based on an alleged connotation of that translated term without first gathering evidence on the connotation of that term in the native language? If this is generally allowable is it also allowable where there is disclosure elsewhere in that translated document that is inconsistent with that connotation?"

8.1 According to Article 112(1) EPC 1973, a question may be referred to the Enlarged Board of Appeal in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. A board of appeal may, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for these purposes.

8.2 As set out under point 7.1 above the board did not base its findings on the term "alarm" on a new connotation or interpretation presented for the first time in the oral proceedings. Therefore, the board considers that the question according to the appellant's request does not contain a point of law which is relevant for the present case.

8.3 However, for a question to be referred to the Enlarged Board of Appeal, it must be relevant for deciding the case in question (G 1/14, OJ EPO 2016, A95 and G 2/04, OJ EPO 2005, 549). Since this not the case here, the appellant's request for a referral to the Enlarged Board of Appeal has to be refused for this reason alone.

Conclusion

9. Since none of the appellant's requests is allowable the appeal must be dismissed.

T 0428/13 - Oral disclosure not proven

Key points

• In this opposition appeal, the Board considers an oral disclosure not proven by a declaration of the speaker in combination with power point slides and preparation  notes. 
• "[It] is generally accepted case law, that a single declaration of the presenter of a lecture does not give sufficient proof of the content which has been disclosed orally or has been presented on slides prepared for the lecture ". Therefore " the Affidavit of [the speaker] on its own is not sufficient to give proof what had actually been disclosed orally when presenting the slides of Annex A1." The Board cites T 1212/97 holding that " The information content made publicly available by a lecture cannot be put beyond reasonable doubt by any evidence of the lecturer alone". Note that " on slides" refers to what is on the screen, not to any handouts. 

EPO T 0428/13 - link

3. Novelty

3.1 Novelty in view of D7 supported by D8 to D10

3.1.1 The oral disclosure D7 of Mr. Altena took place at the 57th Hardening Colloquium on 10. October 2001.

In the Affidavit D8, Mr. Altena describes what in his view has been presented at the conference by referring to Annex A1 (power point slides, which allegedly had been shown during the conference) and Annex A2 (representing preparation notes which allegedly reproduce the content of the talk held by Mr. Altena).

3.1.2 Concerning the content of an oral disclosure it is generally accepted case law, that a single declaration of the presenter of a lecture does not give sufficient proof of the content which has been disclosed orally or has been presented on slides prepared for the lecture (Case Law of the Boards of Appeal, Chapter I.C.3.2.2, see in particular T1212/97).

Following this generally accepted principle, the Affidavit of Mr. Altena (D8) on its own is not sufficient to give proof what had actually been disclosed orally when presenting the slides of Annex A1.

D9 and D10, which are a publication and a colloquium report on the same topic as the presentation D7, demonstrate that the content of the presentation of Mr. Altena was open to the public and that the presentation had taken place. However, these documents alone are not evidence of what had been disclosed orally. Furthermore, they are not prior art under Article 54(2) EPC themselves, since they have not been disclosed before the filing date of the contested patent.

Therefore it has not been demonstrated by the appellant to a sufficient standard what was orally made available to the public during the 57th Hardening Colloquium.

3.1.3 Thus, the Board concludes that it has not been shown that the subject-matter of claim 1 of the main request was orally made available at the conference in 2001.

EPO G 1/16 - Undisclosed disclaimers (Disclaimer III)

Key points

• The Enlarged Board decides that for 'undisclosed' disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and that for 'disclosed' disclaimers the proper test is the gold standard disclosure test of G 2/10. Hence, the assessment of the allowability of a claim amendment by an undisclosed disclaimer is governed exclusively by the criteria laid down in G 1/03.

BoA order (headnote) 

For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03 [i.e. be made to provide novelty over an Article 54(3) prior right, or over an accidental anticipation, or to exclude subject-matter excluded from patentability for non-technical reasons].

The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

From the BoA news item:

"In the reasons for its decision, the Enlarged Board emphasised that this standard is neither intended nor to be interpreted as a departure from decision G 1/03 but that it is understood to be already encompassed by the requirements of G 1/03."
"The standard defined in G 2/10 as the "gold standard" remains the relevant disclosure test for assessing the allowability of a claim amendment by the introduction of a disclosed disclaimer."



Further comment

• The Enlarged Board adds (in [46]) that the evaluation of inventive step has to be carried out disregarding the undisclosed disclaimer (cf. T 710/92). 

EPO G1/16 (G 0001/16) - news item, link


Reasons for the decision
[...]
Disclaimer - definition
12. Patent claims define the subject-matter for which protection is sought in terms of the technical features of the claimed invention (Articles 69(1), first sentence, and 84 EPC). These technical features define the elements and characteristics of the claimed subject-matter and, usually, are phrased as “positive” technical features. However, the claimed subject-matter may also be defined in terms of “negative” claim features which describe elements and characteristics that the claimed subject-matter does not have.
13. Generally speaking, a disclaimer in a patent claim consists of words, terms, formulae, compounds or other elements which identify subject-matter specifically not claimed.
The term “disclaimer”, as used in G 1/03 (supra, Reasons, point 2), means an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a generally defined subject-matter specific embodiments or areas. However, the Enlarged Board limited the definition in that decision to the extent that a disclaimer which contributes to the technical teaching and adds subject-matter within the meaning of Article 123(2) EPC is not a disclaimer within the meaning of decision G 1/03 (supra, Reasons, point 2.6.1).
This definition of the term “disclaimer” was also used in G 2/10 (supra, Reasons, point 2.2).
The Enlarged Board concurs furthermore with decision T 1870/08 (Reasons, point 4.6.7, not published in the OJ EPO) that a disclaimer is only a proper disclaimer if the remaining legal subject-matter is less than that of the unamended claim. If any subject-matter can be identified which falls within the scope of the claim after amendment by the proposed disclaimer, but which did not do so before the amendment, the disclaimer is improper and, as a consequence of this, unallowable under Article 123(2) EPC.
This understanding of what constitutes a proper disclaimer is also reflected in the present decision.
14. The term “undisclosed disclaimer” relates to the situation in which neither the disclaimer itself nor the subject-matter excluded by it have been disclosed in the application as filed.
15. The term “disclosed disclaimer” relates to the situation in which the disclaimer itself might not have been disclosed in the application as filed, but the subject-matter excluded by it has a basis in the application as filed, e.g. in an embodiment.
16. Thus, undisclosed disclaimers and disclosed disclaimers can be distinguished according to whether the subject-matter on which the respective disclaimer is based is explicitly or implicitly, directly and unambiguously, disclosed to the skilled person using common general knowledge, in the application as filed.

T 1120/12 - In time but not enough explanations

Key points

• In this opposition appeal case, the Board has to decide on admissibility of a request filed with the Statement of response in appeal (under Article 12(4) RPBA). 
• The Board considers a clear case wherein the request did not need to be filed before the OD. "Following a preliminary opinion of the opposition division that the patent as granted fulfilled the requirements of the EPC, the opposition had been rejected during the oral proceedings before the opposition division without any new aspects arising. Therefore, the board cannot identify a situation during the opposition proceedings in which the filing of an auxiliary request by the respondent was procedurally required to such extent that this omission should be detrimental to the respondent at the appeal stage." 
• However, the request is not admitted because it was filed without sufficient substantiation. In particular, basis was indicated A83 was discussed, but inventive step not. Therefore, the request is not admitted.

EPO T 1120/12 -  link 

Reasons for the Decision
[...] 29. The subject-matter of claim 1 of auxiliary requests 1 and 2 thus lacks an inventive step.

Auxiliary request 4 - admission into the proceedings (Article 12(2), (4) RPBA)

30. According to Article 12(4) RPBA, everything presented by the parties under Article 12(1) RPBA, in particular in the reply to the grounds of appeal (cf. Article 12(1)(b) RPBA), shall be taken into account by the board if and to the extent it relates to the case under appeal and meets the requirements of Article 12(2) RPBA, the board having the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings. Article 12(2) RPBA inter alia provides that the reply to the statement of grounds of appeal shall contain a party's complete case, set out clearly and concisely why it is requested that the decision under appeal be upheld and should specify expressly all the facts, arguments and evidence relied on.

31. Claim 1 of auxiliary request is for a pharmaceutical composition comprising the Abeta1-7 fragment conjugate and an adjuvant. The request, in relation to which the appellant had requested that it not be admitted into the proceedings, was filed with the reply to the appellant's statement of grounds of appeal.