T 224/08 – A Lightened Burden

The old Romans coined the general legal principle that “he who asserts something positive has the burden of proof”, or, as they put it: “Affirmanti incumbit probatio” and “Ei incumbit probatio qui dicit non qui negat” (cf. T 792/00 [9]). However, this principle has some limits. The present decision draws a borderline concerning the burden of proof for a prior public use.

** Translation from the German **

[3.1] The Board shares the opinion of the Opposition Division (OD) that the operating manual E6 together with the commercialised lamps “Acculux LED 2000” (invoice E8) had been made available to the public and that their content is part of the prior art under A 54(2).

The [patent proprietor] has contested this during the oral proceedings by pointing out that the immediate link (Zusammenhang) between E6 and E8, that is to say that introduction E6 was contained in the folded box wherein the lamps were sold, had never been proven (nachgewiesen).

The Board considers this to constitute a borderline case of the general principle according to which the opponent bears the burden of proof, as the opponent has produced all the written documents to which its position gave it access and therefore has proven (nachgewiesen) the circumstances and the object of the commercialisation of the lamps, which as such has not been contested, as far as this could be done at all.

In the present case, the company of the [patent proprietor] itself has issued the invoice E8 and sold the Acculux LED 2000 lamps. If, against normal expectations, the operating manual that had been written for the product carrying the same name had not been included with the product then the distributor (that is to say, the patent proprietor) would have been at liberty to provide objectively comprehensible reasons, declarations or at least concrete clues as to the contested circumstances of the distribution at that time.

In this regard the Board finds that during the opposition proceedings the patent proprietor […] has only formally contested the prior public use for which E6 and E8 provide evidence (“… hereby expressly contested …”) without providing any concrete, objective argument […].

Given the evidence before the Board, the Board has no – even rudimentary – reason to doubt that E6 was made available to the public via the inclusion of the operating manual E6 that had been written for the lamps according to invoice E8 and carrying the same title “Acculux LED 2000”, as this had been asserted and acknowledged by the OD.

Should you wish to download the whole decision (in German), just click here.