Tuesday, 1 December 2009

T 1464/05 - Sales of Test Samples Do Not Necessarily Imply Confidentiality

In T 782/92 [2.2], it was held that “a product made available for test purposes is generally to be treated as confidential. Sale of the product in a limited quantity may indicate sale for test purposes, if the product is normally sold in large quantities.” The present decision shows that this reasoning is not always followed.
The public prior use alleged by the appellant relates to the offer of sale, sale and delivery of the product Sepigel H400 before the priority date of the patent in suit […]

During the appeal proceedings the parties did not dispute the alleged delivery 200 kg of the product Sepigel H400 before the priority date of the patent in suit [… T]he opposition division (OD) held that an amount of 200 kg of Sepigel H400 was suitable for test purposes only and that consequently the alleged sale and delivery of the product were bound by an implicit confidentiality agreement. […] [4.1]

While document E1-a refers to the delivery in 1991 of a small sample (“échantillon”) of the product for testing purposes, the subsequent delivery of the product evidenced by documents E1-b to E1-f involved 200 kg of the product. In view of the amounts of composition required for the production of optical fibre cables, especially of submarine cables, the Board concurs with the OD that an amount of 200 kg of the product, although clearly a bigger amount than the small sample initially delivered, would not have been sufficient for the production of optical cables on a commercial scale, but at the most for possibly carrying out tests in the production of optical cables and with the cables so obtained.

However, as held in decision T 681/01 [2.8], “there must be something in the circumstances that suggests that a confidential relation existed before a delivery which appears to be the result of an ordinary commercial transaction can be disregarded as not making the delivered goods available to a member of the public”, and […] the mere fact that a product has been delivered possibly for carrying out tests in what appears to be the result of an ordinary commercial transaction does not constitute by itself, in the absence of any other special circumstance or supporting evidence, a sufficient condition for concluding that the product was necessarily delivered under an implicit confidentiality agreement (see in this respect decisions T 602/91 [2.1-2], T 264/99 [4], T 913/01 [1.3], T 407/03 [2.3], and T 1510/06 [4.2]).

In the particular circumstances of the present case, and with reference to the delivery involving 200 kg of the product, not only is there no indication that any express secrecy agreement existed between Seppic and Teleco, but also no indication that any particular or special relationship existed between the two companies other than the ordinary relationship between a seller and a buyer company. In particular, there is no indication in the evidence on file that the delivery of the product occurred at some stage of the development of the product before its unrestricted introduction into the market as contended by the respondent, or that the product Sepigel H400 was manufactured by Seppic within a technical cooperation agreement or within a research or development program with Teleco, or restrictively sold by Seppic to Teleco under predetermined conditions or within a contractual relationship from which any particular interest in a secrecy agreement could be derived.

On the contrary, the confluence of the following circumstances would rather indicate that the delivery of the product to Teleco took place as an ordinary commercial transaction:

- The delivery 200 kg of the product took place about one and a half years after a small sample had been sent for testing predetermined characteristics and, while the small sample had apparently been sent free of charge, Teleco was charged for the delivery of the amount of 200 kg of the product. These facts constitute an indication that Teleco first obtained information on the characteristics of the product before acquiring the product as a typical potential end user of this kind of products.

- One and a half years before the delivery of 200 kg of the product, the product already had a trade name "Sepigel H400" consistently used in the documents on file, and the details of its composition and manufacturing process had been deposited at a notary’s office. These facts would indicate that the development stage of the product had already been completed before the delivery of the product.

- The product Sepigel H400 was offered to at least three further companies. This fact indicates the interest of Seppic to disclose the product to further potential customers during what appears to have also constituted routine commercial contacts, and therefore also the intention of Seppic to produce and sell the product commercially.

[…] There is no evidence that further negotiations took place between Seppic and Teleco or that subsequent deliveries of the product were made or that Teleco actually produced optical cables with the delivered product. Nonetheless, although such evidence would have further supported the above assessment, the mere absence of such evidence does not affect, and is not at variance with the above assessment.

In view of the above, and in the absence of any indication or evidence to the contrary, the Board sees no reason for not considering the offer and delivery of the product Sepigel H400 by Seppic to Teleco as a regular and unrestricted commercial transaction without implicit obligation of confidentiality on the part of the recipient Teleco as a member of the public who is therefore free to disclose any information that could have been gained from the circumstances under which the delivery took place. [4.2] 

NB: This decision is also discussed here (in French).

To read the whole decision, click here.