Monday, 19 April 2010

T 413/08 – Repudiate Quickly


This decision deals with an appeal against the revocation of a European patent. When filing its appeal, the patent proprietor pointed out that the machine described as prior art in the patent at paragraphs [0002] to [0006] did not belong to the prior art. It later explained that the machine was mentioned in error and should not have been referred to as being conventional. The opponent did not agree and requested the Board to refer the following questions to the Enlarged Board (EBA):

1. Insofar as an applicant or patent proprietor indicates that a state of the art is known in the description of an application and it constitutes the closest prior art on which the technical problem to be solved is based, is it admissible to consider that this state of the art forms part of the state of the art in the sense of A 54(2)?
2. If the answer to this question is no, how should the state of the art acknowledged by the applicant or patent proprietor as well as the technical problem to be solved based on this prior art be regarded?

Here is what the Board had to say:

[2] In the written grounds of appeal, the appellant resiled from the indication of background art as set out in the patent in suit. The Board is of the opinion that, under these circumstances, and in the absence of any evidence to the contrary, the printing machine described in the patent in suit in paragraphs [0002] to [0006] cannot be regarded as having been made available to the public before the priority date of the patent in suit.

Nevertheless, it is not considered necessary or appropriate to refer the questions to the EBA in accordance with A 112(1)(a) as requested by the [opponent].

As stated in decision T 730/05 [3.2, last sentence] and in decision T 1554/05 [2.1, penultimate sentence] “the other relevant cases of which the board is aware, dealing mainly with the question of whether an applicant is allowed to resile from its indication of background art, either implicitly or explicitly take the view that, if not resiled from or clearly not prior art for other reasons, it may be relied upon as prior art (see T 654/92, T 691/94, T 1449/05 and T 211/06).”

The [opponent] relied upon two cases in particular. In case T 1554/05 [2.1], the [patent proprietor] did not resile from the indications of background art in the description. In case T 1449/05 [2.8], the patent proprietor attempted to resile from his admission of prior art nearly at the end of oral proceedings (OPs). Admission of this resilement would have required the adjournment of the OPs to allow the appellant opponent to search for adequate evidence that substantiates his allegations. The present case is thus distinguished from these cases in that the appellant resiled from an admission of prior art at an early point in the appeal proceedings.

In the present case, the [patent proprietor] stated in his grounds of appeal in reaction to statements contained in the decision under appeal, that “document D0 does not belong to the prior art according to A 54(2)” and stated that there was no objective evidence that the content described in document D0 was made available to the public before the date of filing of the patent in suit. It was suggested on behalf of the respondent that it was only at the OPs before the board that the appellant properly resiled from the indication of background art in the description. This is not accepted. The statements by the appellant under point (2) of the reasons contained in the written grounds of appeal are considered to constitute an unambiguous statement that the information concerning printing machine contained in paragraphs [0002] to [0006] of the patent in suit was not available to the public before the date of filing.

There is thus no contradictory case law in respect of the status of an acknowledgement of prior art. In the absence of any indication to the contrary, an acknowledgement of prior art by a patent proprietor may be accepted at face value. If a patent proprietor resiles from an acknowledgement of prior art at a point in time which does not give rise to any procedural problems, the acknowledgement may no longer be relied upon.

In the present case, the patent proprietor has resiled from its indication of background art in due time, so that, in the absence of any evidence to the contrary, it cannot be assumed that the acknowledged device was, in fact, made available to the public before the priority date of the patent in suit. Consequently, the printing machine described in the patent in suit in paragraphs [0002] to [0006] does not form part of the prior art.

To read the whole decision, click here.

NB: This decision has already been reported on Laurent Teyssèdre’s blog.

5 comments:

EQE Tools said...

Thank you Oliver, again an interesting case.

During my training period, my tutor always warned me when I used words like "conventional", "generally accepted" or "well known" when drafting a patent application.

This case shows the headache such language can cause later on ...

Oliver G. Randl said...

True indeed.

Another dangerous thing to do is to mark drawings as "prior art" (as often required in the States), unless they are really taken from a prior art document.

Anonymous said...

I thought an opposition appeal was primarily intended to verify the correctness of the decision of the OD. Isn't it a bit late to resile from an acknowledgement of prior art at that stage? (Well, apparently not ;))

In this case the OD's decision to revoke was (probably) correct, the claims haven't changed, but the Board decides to maintain unamended.

Maybe the opponent could have worded his questions for the EBA a bit better, because now clearly the answer to Q1 is "yes" and Q2 becomes meaningless. More interesting is the question whether an applicant can resile from acknowledged prior art at all (especially if the application based the technical problem to be solved on that prior art), and if so, if he can still do so in an opposition appeal when he could have resiled during the opposition procedure. (The Board probably would still not have made a referral though.)

Anonymous said...

For revoking a patent or refusing an application for lack of novelty or inventiveness there has to be proof that something was indeed known and available to the public. An acknowledgement that something was prior art made by the applicant/proprietor is usually not enough, since it may be that it was made erroneously and only refers to "in-house" knowledge.
An exception to this principle was made by the boards (and clearly explained why) when the resilement was made so late that it prevented the other party to react in an appropriate manner, ie to submit evidence that what had been acknowledged as known was in fact known.
In the present decision such exceptional circumstances did not arise, since the resilement was made at the beginning of the appeal proceedings. Hence the opponent had enough time to search for adequate evidence which surely would have been admitted by the board.
It has to be remembered that a fair trial, but not the punishment of a party, is the main objective of the appeal.

Anonymous said...

I would say an acknowledgement IS enough to revoke or refuse, unless the applicant/proprietor resiles from the acknowledgement (in time).

The OD in this case was correct to revoke. The proprietor had not resiled, and the OD could not know that the proprietor would resile later in appeal. The OD was obliged to treat the background section as prior art.

I don't think the applicant or proprietor has a "right" to resile from any acknowledgement of prior art. He may only resile if in fact the acknowledgement was made erroneously. Parties have no right to (knowingly) lie. (That the ED or OD will usually not be able to verify this is a different matter.)

"It has to be remembered that a fair trial, but not the punishment of a party, is the main objective of the appeal."
If an appeal is about the correctness of the decision of the OD ("The purpose of the appeal procedure is mainly to give the losing party the possibility of challenging the decision of the OD on its merits.", G 9/91), then imo it is only fair to judge based on the same facts as the OD did. Note that the proprietor could have resiled from the acknowledgement during the opposition procedure. Why should he have the right to arbitrarily delay the resilement, thereby delaying the whole procedure?

I'm not saying he does not have this right (and judging from T 413/08 he has the right), but there are arguments to the contrary.