Friday, 9 July 2010

T 520/08 – Quick Inspection

** Translation from the German **

[3.1] Document D4 is an Australian provisional application which was not available to the public. However, the priority of document D4 has been claimed in European application D1, which had been published two days before the priority date of the impugned patent.

Pursuant A 128(4), after the publication of a European patent application, the files relating to the application may be inspected on request. This ensures public availability.

The [patent proprietor] pointed out that for practical reasons file inspection could not possibly have been obtained only two days after the publication at that time, but they have not filed any evidence proving this assertion.

Therefore, the Board follows the argument of the [opponent] according to which document D4 was available to the public before the priority date of the impugned patent and constitutes prior art under A 54(2).

This is tough but quite logical. I sometimes check how long it takes before documents I have filed via Epoline appear on Register Plus. It is not uncommon that I have to wait for several days. At the priority date of the patent under consideration (October 1999) Register Plus had not yet gone live and it appears to be very unlikely that the priority document was de facto publicly available two days after the publication of application D1. Perhaps the patentee could have obtained an affidavit in this regard. However, as it did not submit any evidence, the Board logically followed the argument of the opponent.

To read the whole decision (in German), please click here.


Anonymous said...

Oliver, one thing that apparently neither the board nor the parties mentioned is that it is the European Patent Bulletin which informs the public of the existence of the application and the possibility of its inspection (R. 143 EPC; R. 92 EPC 1973). One isn't obliged to first refer to the A publication pamphlet, it is enough to consult the bulletin (does anyone actually ever read it?). Think of German Gebrauchsmuster where the "Tag der Bekanntmachung" can be earlier that the actual pamphlet publication. Even though "U" documents were not part of the state of the art in old German patent law (and many other ones), the definition of prior art became progressively broader even before the creation of the EPC.