Monday, 1 November 2010

T 672/07 – Trouble With A Date

A recurrent problem the Boards have to deal with is related to oral presentations given at conferences. Very often such conferences issue proceedings containing the text of the presentations. Is it possible to consider that the content of this text was disclosed at the date of the conference? There has been some disagreement between the instances of the EPO on that topic.

The Guidelines for examination in the EPO (D-V 3.3) contain the statement that “if information is made available by means of a written description and use or by means of a written and oral description, but only the use or the oral description is made available before the relevant date, then in accordance with C-IV, 6.1, the subsequently published written description may be deemed to give a true account of that oral description or use, unless the proprietor of the patent can give good reason why this should not be the case. In this case, the opponent must adduce proof to the contrary in respect of the reasons given by the proprietor of the patent.”

The Boards are not bound by the Guidelines and indeed seem not to follow this approach: T 153/88 [7.4] has held that “where a written disclosure is published which is based on an oral disclosure at a public conference held some years earlier, it cannot as a rule be assumed that the written disclosure is identical to the oral disclosure, unless there is convincing evidence to the contrary (cf. T 77/94 [2.2]). T 348/94 [3.2] confirms: “Unless there is proof to the contrary, a written publication which is supposed to be based on a paper previously read at a public meeting held some time earlier, cannot be assumed to be identical to what was orally disclosed but may contain additional information.” See also the more recent decisions T 759/03 [21] and T 729/05 [2.5].

The present decision deals with an even more complex situation where the date of the written publication of the presentation was unclear, too.

[2.1] The [patent proprietor] requested that document D13 be not admitted into the proceedings as it had not been proven that it was publically (sic) available before the priority date of the patent in suit.

However, D13 had been already filed by opponent 02 […] with its notice of opposition. Although the proprietor had noted that D13 did not have any date, this issue was not dealt with in the decision under appeal. In fact, there is merely a passing reference to D13 in paragraph 2.3 of the opposition division’s decision when dealing with novelty of the claimed subject-matter. Thus, it appears that D13 is in the proceedings and its admissibility cannot be questioned. Rather the relevant question is whether D13 has to be considered as state of the art in accordance with A 54.

[2.2] Document D13 is the publication of the work presented by R.N. Campbell and A.M. Chatterjee at a conference held in Houston, Texas, between 26 February and 1 March 1995. The copy filed by the [opponent] carries on the front page […] a handwritten amendment with the words “(February 1995)”. Furthermore, the bibliographic data provided on a separate sheet, inter alia contains the line “Accession Number- 576289 -Update- 199604”, which appears to indicate that the copy filed by the [opponent] relates to an updated version dated April (04) 1996. This date is after the priority date of the patent in suit (26 January 1996).

In view of this situation, the board had asked the [opponent] to provide evidence for the actual publication date of D13. In its reply the [opponent] had stated that no original copy of D13 was available to it, but filed documents D15 to D17 as indirect evidence that D13 had been published before 1996. As is apparent from the cover page of D13 itself, the authors of D13 presented their work at the conference in Houston for the Shell Company. Since the propylene business of Shell was sold to Union Carbide in November 1995 (as demonstrated by D15), and thereafter the authors of D13 filed patent applications in the name of Union Carbide (D16, D17), the [opponent] concluded that D13 must have been published before the priority date of the patent in suit.

However, the board does not find this line of argument conclusive. The fact that the authors of D13 had been working for Shell at the time they presented their work to the conference is no proof of the actual publication date of document D13 itself. For example, D13 might have been published after the acquisition of Shell’s polypropylene business by Union Carbide. Perhaps even April 1996 (appearing in bibliographic data provided with D13) is the correct publication date of D13, which is after the priority date of the patent in suit. Thus, D15 - D17 cannot demonstrate the actual publication date of D13.

The board can also not accept the argument of the [opponent] advanced during the oral proceedings that the content of D13 was orally presented in the conference. There is simply no evidence on file for the [opponent’s] assertion that the content of oral presentation at the conference was identical with the content of D13. It follows from the above that the publication date of D13 is not known and, consequently, D13 cannot be considered as state of the art in accordance with A 54(2).

If you wish to download this decision, just click here.