Monday 26 October 2009

T 95/07 - Standard of Proof for Implicit Disclosure

As this decision is interesting on several accounts, I will devote more than one post to it.

[…] In the case of arguing a lack of novelty based on a replication of an example of a prior art citation, the case being made is that the subject-matter claimed, even if not anticipated by the explicit literal disclosure of the citation is nevertheless implicitly anticipated to the extent that in carrying out the express literal disclosure and instructions of a prior art document (e.g. an example) subject-matter falling within the terms of the claims of the patent in suit is the inevitable outcome. In deciding what is or is not the inevitable outcome of an express literal disclosure, there can be no space for doubt and hence a much stricter standard of proof than the “balance of probability”, namely “beyond all reasonable doubt” needs to be applied. This means that if there is any reasonable doubt as to what may or may not be the result of carrying out the literal disclosure and instructions of a prior art document, i.e. if there remains a “grey area” then the case of anticipation based on that document must fail (see T 793/93 [2.1]). [4.2.5]

To read the whole decision, click here.


Karen G. Hazzah said...


This sounds quite like the inherency doctrine in US patent law. But while the EPO allows some doubt as to what the reference discloses, the US does not: "Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).

In addition to explicit/literal disclosure and inherency, US patent law also recognizes implicit disclosure: "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)

Does the EPO recognize implicit disclosure? Or maybe the EPO doctrine highlighted in your post is closer to US implicit disclosure than US inherency? I say that because the "reasonably drawn inference" quote from US case law seems to allow for doubt, as does the EPO doctrine in your blog post.