Straw men not only file oppositions, they also engage in commercial activities as the present decision shows.
[3.1] The opponent contended that a photovoltaic module produced by the company EPV Energy Photovoltaics Inc., Princeton (US) (“EPV-module” hereinafter) and supplied to the EPO as evidence had been made available to the public by use before the priority date of the application in suit and thus was comprised in the state of the art, pursuant to A 54(2).
In particular, the [opponent] contended that the EPV-module number 326-17, supplied to the EPO as evidence, had been produced by EPV on 15 January 1999. As confirmed by the declaration of Mr. G., executive vice president of EPV Solar, the successor of EPV [...] the date “01-15-99” engraved in the module corresponded to the manufacturing date, the number “326” to the run number and the number “17” to the serial number of the plate in the run. Document A3 was an accompanying data sheet relative to I/V measurements performed by EPV on this module no. 326-17 [...].
The predecessor of the opponent at that time, the company ASE GmbH, became aware of the existence of the EPV-module and was interested in analysing it. However, being a competitor to EPV, it feared that EPV would be reluctant to deliver and thus instructed one of its employees, Mr. G. H., to order the module as a private person, thereby acting as a straw man for the opponent [...].
Thereupon Mr. G. H. contacted EPV and ordered three modules including the above EPV-module no. 326-17, as confirmed by the email exchanges between Mr. G. H. and Mrs. C. from EPV [...], the customer order dated 14 January 1999 [...] and the corresponding invoice dated 17 February 1999 [...].
Mr. G. H. billed ASE for his expenses incurred in the purchase on 3 February 1999 [...]. The modules, including module no. 326-17 were analysed and tested by ASE on 2 February 1999 and thereafter [...].
Accordingly, by the sale of the EPV-module no. 326-17 to Mr. G. H., the module was made available to the public before the priority date of the patent.
[3.2] The [patent proprietor] argued that the sale to a straw man, as in the present case, did not render the module available to the public, as not the whole public had access to it. In particular, the opponent would not have been able to buy the module. Moreover, no evidence was provided of any further sales of the module.
Furthermore, an agreement of confidentiality between EPV and Mr. G. H. had to be assumed as the copies of the e-mail correspondence submitted [...] were incomplete and an early e-mail from EPV stated “We would be happy to work with you”.
Moreover, the evidence provided of the sale contained a number of oddities, casting sufficient doubts for it to be dismissed. In particular, the bill issued by Mr. G. H. was dated earlier than the invoice, it had no receipts annexed to it and there was no apparent reason for the VAT (“MwSt”) to appear on it. Furthermore, it was unclear why the customer order contained handwritten details of the products and who made them. Finally, little was known about Mr. G. who provided a declaration regarding EPV [...].
[3.3] According to established jurisprudence, information is considered to be made available to the public even if only one member of the public had access to it and there was no bar of confidentiality restricting the use or dissemination of such information. The fact that this member of the public acted as a straw man or that the opponent itself may have had difficulties in obtaining the module from EPV is immaterial.
Furthermore, in the board’s opinion, based on the evidence on file there can be no reasonable doubt that the sale of the EPV-module to Mr. G. H. took place before the priority date of the patent and was free of any obligation to maintain confidentiality.
Accordingly, the EPV-module no. 326-17 was made available to the public by use before the priority date of the patent. The EPV-module thus is comprised in the state of the art in accordance with A 54(2).
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