Tuesday, 1 February 2011

T 1309/07 – No Common Interest

Claim 1 of the main request (and of the patent as granted) read:
1. Piston for an internal combustion engine having an annularly arranged cooling duct which has inlet and outlet openings, it being possible to feed cooling oil through a cooling-oil nozzle as a free oil jet via an inlet channel into the inlet opening and therefore into the cooling duct and to lead cooling oil away through at least one outlet opening via an outlet duct, characterized in that the cooling duct (2) has at least three openings (3,4,5), two inlet openings (3,5) to be used alternately being arranged, as seen in the plane of the cooling duct, so as to lie opposite the one outlet opening (4), and in that the openings (3,5) are arranged symmetrically with respect to a centre axis extending through the outlet opening (4).

*** Translated from the German ***

Prior use by delivery of pistons

What was delivered ?

[3.1.1] Drawings E4, E5A, E6

Both drawing E4 and drawing E5a refer in their upper corner to drawing E6 (number of drawing 1K42147/23). In the number of the blank (Rohling) or pre-product given in the right upper corner of drawing E6 “A8” refers to a “piston blank with variances (Abweichungen)”, “+” to certain core forming process steps, and “B1” to further machining steps (see […] E5a). Moreover, all figures E4, E5a and E6 refer to the same order number 85271. Therefore, the Board has no doubts that the figures E4 and E5a and E6 show different manufacturing steps for the production of the piston shown in drawing E6.

[3.1.2] Assignment of the drawings E4 to E6 to the delivery notes (Lieferscheine) E7

a) The column “Désignation Article N° Commande – Pays d’Origine” consistently refers to “080V191X7A08B1-1 CL”. The Board is convinced by the explanation of [Opponent 1], according to which the abbreviation “X7” was chosen in the delivery notes instead of the designation of the core forming process steps in the drawings by means of a certain number of plus signs, also because the particular graphical arrangement of the plus signs in these drawings cannot be easily reproduced with a typewriter keyboard. Moreover, it appears plausible to the Board that, for data processing reasons, leading zeros have been inserted, so that the reference “80V191A8” used in the drawings becomes “080V191X7A08” in the delivery notes.

b) The fact that the following indications of the delivery notes can be assigned to the drawing E6 has also contributed to this conviction of the Board. In the centre of the drawing, on the right hand side, there is a horizontal table in which certain dimensions are assigned to the reference “KH”. Those dimensions have their counterpart in the delivery notes, where the dimension “KH”, i.e. height of the piston […], is given as “HA”, the abbreviation of the French designation for the height. As the dimensions for the piston height and also for the piston diameter correspond to each other in E7 and E6, the product designation in the delivery notes clearly refers to the pistons according to drawings E4 to E6.

[3.1.3] Summing up, the Board finds that from these documents it can clearly be derived that 17 520 pistons according to drawing E6, designed according to drawings E5a and E4, have been delivered to Renault before the priority date of the present patent.

Does this delivery make the pistons available to the public ?

[3.2.1] As a matter of principle, according to the case law of the Boards of appeal, a piece of information is to be deemed available to the public (a) if at least one single member of the public can obtain this piece of information and understand it, and (b) if there is no obligation of secrecy (see T 1081/01 [5]).

[3.2.2] [Opponent 1] is a typical supplier to the car industry. It has delivered pistons for the R19 and Mégane vehicles to the car manufacturer Renault.

If the pistons had been sold without any conditions, Renault would have had to be considered as a member of the public because it could dispose of them without restriction. However, there have been no submissions regarding the terms of delivery, in particular on whether there was a secrecy agreement or not. Therefore, it has to be assessed whether the circumstances of the business relationship lead to the conclusion that there was a tacit obligation of secrecy.

Was there a tacit obligation of secrecy at the time of delivery of the pistons ?

[3.2.3] a) According to the case law of the Boards of appeal, one may presume a tacit obligation of secrecy – inter alia – when the business partners have a common interest in secrecy.

This would, for instance, be the case if the development partners supply each other with samples for experimental purposes. However, such an interest could only be presumed until the pistons are delivered for mass production (Serienproduktion), because from this time on the pistons are destined to be incorporated into vehicles to be sold and thus made accessible to the public. In other words, as soon as the pistons are delivered for mass production one cannot presume a common interest in secrecy (T 1512/06 [4.2.5.a])

Therefore, in the present case, it is decisive whether the pistons that have been delivered were experimental pistons or pistons for the mass production of vehicles.

b) The delivery notes E7 show that between November 14, 1997 and January 5, 1998, i.e. in a period of less than two months, more than 17 000 pistons have been delivered. Such a great quantity as such militates against the presumption that the pistons could have been experimental pistons. Moreover, the delivery note of November 14, 1997, explicitly states that it is the first delivery for mass production (Serienlieferung).

Even if, as submitted by the [patent proprietor], four pistons were needed for an engine test, this would mean that more than 4000 engine tests would have been required. As an engine test run costs about 70 000 Euros, as the [patent proprietor] has submitted, this argument appears not to be convincing. Even more so in view of the argument of the [patent proprietor] that the pistons that had been delivered could have been experimental pistons for testing a modification of the mass production pistons.

The piston reference “80VA91” does not suggest that the pistons were pistons for experimental purposes. As a matter of fact, it can be seen from exhibit E5b that it was a “piston blank with variances”. It is true that in its third column a “piston blank for experiment” is referred to with reference V, but this reference is provided in a different place than in exhibits E4 to E7.

c) Catalogue B1

i) Together with the statement of grounds of appeal, the [patent proprietor] has repeated the submissions it had made during the opposition proceedings, according to which the pistons had not been accessible to the public because the pistons were not pistons for mass production bit experimental pistons. Moreover, it has asked [Opponent 1] to provide proof that the pistons were not experimental pistons.

By filing this exhibit [Opponent 1] has reacted to the submissions of the [patent proprietor] in its statement of grounds of appeal. Its purpose was to meet the submissions of the [patent proprietor] concerning a possibly missing link in the chain of arguments.

As the exhibit is not to be considered late filed, it has been admitted to the proceedings.

ii) Exhibit B1 bears a copyright notice of 1997; obviously it is an extract from a catalogue of considerable volume. Therefore, the Board considers unlikely that a catalogue of such a volume was not put in circulation.

Therefore, the Board is convinced that exhibit B1 was made accessible to the public in 1997.

iii) It can be seen in the second row on page 580 (under the entry “Renault”) that the pistons having the reference 80 V 191 concern the Diesel in-line engines F 8 QT-610/740/768/784/785 of vehicles R19 and Mégane. As drawing E6 depicts a piston of the F8QT740 type (see the bottom on the right hand side), it follows from exhibit B1 that it offered pistons of this type of construction. As, according to the statements of the [patent proprietor], B1 is an extract from a spare parts catalogue, the mass production of the F8QT-740 engines must have been started at the time of publication of this catalogue. At this moment in time one cannot presume a common interest in secrecy any more.

d) Considering these circumstances, the Board is of the firm conviction that the pistons that have been delivered were pistons for mass production of vehicles and that no interest in secrecy cannot be presumed any more.

[3.2.4] Therefore, the pistons according to drawings E4 to E6 have been made accessible to the public before the priority date of the application.

As the pistons according to the main request and the auxiliary requests were found to lack novelty and inventive step, respectively, in view of this prior use, the appeal was dismissed.

Two personal remarks:

(1) I find it interesting that the Board states that “a piece of information is to be deemed available to the public (a) if at least one single member of the public can obtain this piece of information and understand it …”. Personally, I do not think that understanding is required. If the person cannot understand the information but can, for example, record it and transmit it to others, this should be sufficient.

(2) If there was an experimental phase, wherein the delivery of the pistons was covered by a tacit secrecy agreement (a case envisaged by the Board), the mere fact that at a certain time the pistons are delivered for mass production does not, in my opinion, make them available to the public. It is the first sale of a vehicle comprising such a piston that makes them available. If the car manufacturer did assemble vehicles but, for some reason, did not sell them right away but kept them in its facilities for some time, the pistons would not yet be available to the public during that time, I would say.

I think that this situation is analogous to T 1081/01 where it was said that “information provided subject to a confidentiality agreement does not become available to the public merely by reason of the expiry of the obligation to keep it confidential. Some separate act of making it available to the public would be needed.”

Should you wish to download the whole decision (in German) or have a look at the file wrapper, just click here.


Anonymous said...

This decision is interesting, me thinks.

Maybe confusing the "possibility of secrecy before the time of delivery" and "extinction of confidentiality agreement after the delivery" you are.

The way I understand the case, the delivery of 17000 pistons is to be considered as : 1) an end to the " obligation to keep it confidential"
and 2) a "separate act of making it available to the public".
I don't think the Board considered that pistons from a possible previous delivery of pistons as experiments were made available to the public by the delivery of 17000 pistons.
I think they considered that the 17000pistons themselves, as delivered without need of confidentiality, are to be considered as made available to the public.

my 0.2

and thanks for your enlighting comments on all those cases.

Anonymous said...

Just one comment : the Board did not kill the patent in view of a PRIOR USE, but in view of a SALE.

Subtle yet important difference, since prior uses are a pain to prove in terms of actual disclosure (particularly concerning the "use" part), while sales are much more simple once the date and object have been established (no need to prove the "use" part).

oliver said...

Anonymous 1 : You may be right. My remark was of a more general nature, it was only triggered by the present case.

Anonymous 2 : Fair enough. It is the Board who refers to a prior use (Vorbenutzung). It appears to be a more or less generic term, but you are right in pointing out that there may be differences from a practical point of view.