Thursday, 21 January 2010

T 1511/06 – Disclosure Through Secret Sales

This decision deals with a case of prior use. The opponent (Siemens) pointed out that VDO had supplied throttle valves according to the invention to Mercedes-Benz before the effective date of the opposed patent.

The decision is thoroughly reasoned. It gives a detailed analysis of the relationship between a car manufacturer and one of its component suppliers and raises some interesting points. I find the distinction between the secrecy of sales and the secrecy of the object sold quite to the point.

[…] The state of the art comprises any information which has been made available to the public (A 54(2) EPC 1973). It is sufficient that a single member of the public was in a position to gain access to it, provided that he was not bound by an obligation to maintain secrecy at the time when he gained access (see T 1081/01).

In the present case, the crucial point to be assessed is whether or not Mercedes has to be considered as a member of the public not bound by an obligation to maintain secrecy. [4.2.1]

The Board has no knowledge of an express secrecy agreement. Therefore, it has to be established whether it results from the circumstances that a tacit secrecy agreement existed between VDO and Mercedes. [4.2.2]

It is established case law that if at the time of receipt of an information, the recipient was in some special relationship to the donor of the information, he could not be treated as a member of the public, and the information could not be regarded as published for the purposes of A 54(2) EPC (see T 1081/01 [8]). In this respect the following is observed:

(a) The throttle valve shown in document D15 is a typical product of VDO which produces throttle valves of various kinds for use by the automotive industry. In contrast, Mercedes is an example of a typical potential end user of such valves. There is no evidence on file that the throttle valve in question was actually designed by Mercedes and only manufactured by VDO, nor that Mercedes would have any special rights in the technical solutions of the throttle valve, such as a patent or the like. The fact that the underlying technology of throttle valves of the type in suit typically constitute the intellectual property of a part manufacturer is also demonstrated by the parties to the present appeal. Both Appellant and Respondent are part manufacturers and not car manufacturers.

(b) The Board has no information that VDO and Mercedes had concluded a development agreement or entered into any other contractual relations that would indicate either of them having had any particular interest in a secrecy agreement.

(i) As mentioned above, such valves are developed and designed by VDO. The Board recognises that it might be necessary to adapt its dimensions in response to wishes of the end user, or even to individualise the product by using the logo or trademark of the end user. This, however, does not mean that the valves are the result of a technical co-operation between VDO and the end user, i.e. that the valves are a common development.

(ii) Thus, this appeal case is different from those cases of sub-contracting cited by the Respondent. In these cases, a common interest for secrecy was assumed, either because there was a technical co-operation for the common development of a new product (see T 830/90) or for the manufacture of a product developed by the donor of the order (T 799/91).

(c) The Board has no reason to doubt that part manufacturers and car manufacturers often impose a secrecy obligation on each other, for example in cases of common development. However, this does not appear plausible in the present case. Since throttle valves are a typical product of VDO, it cannot be assumed that VDO had an interest in accepting any secrecy obligation with respect to its own products, as it would have prevented it from selling its own product to other car manufacturers. The same argument speaks against the assumption that Mercedes would have been in a special or preferential relationship with VDO in the sense that VDO itself would have intended to sell such throttle valves to Mercedes only. On the other hand, Mercedes has regularly purchased the sample throttle valves, i.e. paid for them. It is also not plausible that Mercedes would have accepted any restrictions from its own part supplier on how to exploit these valves, such as an obligation to request a preliminary consent from VDO before any public sale of the cars equipped with the valves in question. Moreover, it appears unlikely that it would be in the interest of Mercedes to be dependent on a single supplier for these throttle valves. Rather, it is more likely for Mercedes to have an interest that these valves are known to the public so that they could be ordered freely from other suppliers, and not only from a single source.

It is another matter that Mercedes could possibly have required from VDO to keep the fact of the sale secret, in order to prevent the leaking of any information to its competitors about the technical parameters of its engines. However, this is not equal to the obligation of keeping secret the existence of the throttle valve in suit as such, but merely the fact that such throttle valves have been adapted to the engines of Mercedes. […]

(e) The Board thus concludes that considering the relationship between VDO and Mercedes and also considering the overall technical features of the sold part in question it can not be assumed that a tacit secrecy agreement existed for the delivered throttle valves. In this respect, Mercedes has to be considered as a member of the public. [4.2.3]

In view of the foregoing, the Board is unable to conclude any restrictions imposed by the delivery of these throttle valves from VDO to Mercedes.

The Respondent referred to [case law] according to which a product made available for test purposes is to be treated as confidential.

But even if the delivery of these samples was considered for test purposes, the foregoing statement does not apply to the present case. If the possessor of the product is a member of the public, as in case T 221/91 or in the present case, the product has to be considered as being available to the public.

The Board thus concludes that the throttle valves delivered on 2 March 1994 were made available to the public. [4.2.4] 

To read the whole decision, click here.