T 597/07 – Which Must Not Cannot Be

I owe the knowledge of this decision, which had escaped my scrutiny, to Laurent Teyssèdre, who has discussed the various admissibility issues addressed by the Board in a recent post on his blog.

There is still another interesting paragraph in this decision: the discussion of whether D1, a manufacturer’s information sheet for his clients, concerning a new generation of detergent compositions, was prior art under A 54(2).

Based on the date given on its cover sheet, the opponent submitted that the publication year of D1 was 1992. The opponent also pointed out that this was further supported by the postal code “W-4000 Düsseldorf” given in the foot line of the cover sheet. Such postal codes had been used only between the unification of Germany in 1989 and the introduction of the present 5 digits postal code system in 1993.

In its decision, the Opposition Division (OD) [did not consider] Document D1 […] as state of the art according to A 54 since the opponent’s argument that document D1 was of a type which was usually sent to clients was speculative and since in spite of the date and specific postal code printed on the document, it had not been shown where the document actually had turned up and that it had been made available to the public at a certain date. [III]

[…] The OD rejected the appellant’s arguments that papers of the type of document D1 are usually sent to clients and that it was against experience and economic sense to keep such a document unpublished until after the priority date of the patent in suit. In the present case however, even if the issue of the availability of document D1 is assessed on the balance of probabilities, the standard of proof chosen by the Appellant, the outcome is not in the Appellant’s favour.

The reason is that the subject-matter disclosed in document D1 which is relevant here has been filed on 20 September 1993 in document D7 as an International Application published under the PCT on 14 April 1994. This fact alone casts reasonable doubts on a publication of document D1 more than one year earlier, namely in August 1992, the date mentioned on the cover sheet of document D1, since document D1 would have been citable against novelty and inventive step of the subject-matter claimed in document D7.

Therefore the Board holds that even on the balance of probabilities the content of document D1 does not constitute prior art within the meaning of A 54(2). [3]

The balance of probabilities is often difficult to strike. I find it pointless to blame the Board for whatever conclusion it reaches. The argument given by the Board, however, is unpersuasive. It might hold true in an ideal patent world, but whoever has worked in the patent department of a big company knows that (a) the patent department does not always know what the marketers do, and (b) even if it knew that there had been a very limited disclosure, it might still be tempted to file a patent application, hoping that nobody would discover the prior disclosure. Sounds familiar ? Of course not.

To read the whole decision, click here.