T 278/09 – On Sheets And Other Paperwork

The present appeal was directed against the decision of the Opposition Division (OD) revoking the opposed patent.

The decision contains an interesting discussion of whether some of the documents cited against the patent were indeed available to the public before the priority date of the patent under consideration (1/9/99).

It shows how hard it can be for an opponent to prove the existence of a prior public use/disclosure.

*** Translated from the German ***

[1.3.1] Document D2 is a product specification sheet issued by Engelhard Corporation describing the product Biju® BVW. This document has at its bottom left a so-called revision date REV-3 from 1994. There is no date of impression or publication.

D2 - click to enlarge

It can be seen from the declaration of Mr Ozimek, filed as document D15, that Mr Ozimek has been working in the pigment distribution business for Mearl Corporation (from 1994 to 1996), for Engelhard Corporation, which had merged with Mearl Corporation (from 1996 to 2006) and for BASF Corporation, which has merged with Engelhard Corporation (since 2006). […]

NB: BASF Corporation acts as opponent in the present case.

According to this declaration the product Biju® BVW was sold by Mearl Corporation from 1994 to 1996; it was only from 1997 onwards that the product was sold by Engelhard Corporation. […]

Moreover, document D15 contains the declaration that product specification sheets were sent to the clients on the date of revision indicated at their bottom left, or shortly afterwards. […] However, document D15 does not mention whether the specific product specification sheet D2 was transmitted to the clients without any obligation of secrecy and whether this version has been made available to the clients at all.

The Board also notes that document D2 of Engelhard Corporation could not have been sent to the clients on the mentioned revision date of 1994 or shortly afterwards because, as can be seen from document D15, Engelhard Corporation only could sell the Biju® BVW product from 1997 onwards, after its merger with Mearl Corporation. Moreover, it is unknown whether the original revised version of 1994 – which has not been filed – was made available to the clients by the then product proprietor Mearl Corporation without any obligation of secrecy, or has been sent to the clients at all.

Furthermore, the statement in document D15 according to which the product Biju® BVW was sold, without there being any evidence for a sale to a buyer who was not bound by an obligation of secrecy, is insufficient as proof for a prior public use (see T 472/92 [3.1-2] and “Case Law of the Boards of appeal of the EPO”, 6th edition, 2010, I.C.1.8.8(a), page 76) or public availability of document D2. Moreover, the indications, which are provided below the product properties in D2 only indicate that the product described therein was only potentially intended to be sold but do not provide proof that a product having the disclosed properties has indeed been sold without any obligation of secrecy.

In this context, the Board is of the opinion that a product specification sheet only presents the composition and the properties of newly developed or improved products and as such does not reveal anything on its commercialisation and potential public availability. The decision on commercialisation and on the moment of commercialisation can be based on other circumstances, such as the general economic situation or the commercialisation policy of the company under consideration. Moreover, the positive decision to commercialise a product does not necessarily entail that a product specification sheet is to be made available to the public, because it can also be distributed under obligation of secrecy. Therefore, in such a case it is not sufficient to merely strike the balance of probabilities for the public availability of an allegedly novelty destructive product specification sheet, the public availability of which is only based on presumptions (see also T 738/04 [3.4]).

[1.3.2] Document D13 of Mearl Corporation also concerns the product Biju® BVW and has a revision date 2/18/93, i.e. of 1993.

D13 - click to enlarge

As Mr Oziek was not yet working for Mearl Corporation in 1993 […] his declaration is irrelevant in respect of the availability of document D13.

Document D13 contains a barely readable passage with three signatures at its bottom right. Therefore, it is not clear to the Board whether this document is an internal document of Mearl Corporation or a product specification sheet to be given to clients. Moreover, it is unknown whether this document was indeed made available to clients without there being any obligation of secrecy and whether it has been sent to the clients at all.

The arguments made in respect of document D2 also apply to document D13 in an analogous way.

[1.3.3] As far as the decisions T 804/05, T 743/89 and T 55/01 are concerned, the Board is of the following opinion:

• Decision T 804/05 dealt with the public availability of an advertising leaflet, which is normally distributed among interested circles and which has a date on its cover sheet; the competent Board decided that in the absence of proof to the contrary one had to presume that the advertising leaflet had been made available to interested clients without any obligation of secrecy during the months following this date (see point [2] of the reasons). However, this case differs from the present case because a loose product specification sheet, which is not part of an official advertising leaflet, does not, as explained above, necessarily qualify as information that is meant for the public;

• T 743/89 concerned a commercial flyer which was normally to be distributed among interested circles and which had a date (see point [3] of the reasons); in this case also it was decided that one had to presume that the flyer was made available to the public during the months following the date of impression. Therefore, this case is not to be equated with the present case, where the Board has to decide on the public availability of a loose product specification sheet without any date of impression, which is not part of an official advertising leaflet and does not necessarily qualify as information that is meant for the public;

• T 55/01 dealt with the question of whether an operating manual for the satellite receiver of certain TV set brands, which had a date of impression, had been made available to the public. The competent Board decided (see point [4.1] of the reasons) that TV sets were mass-produced goods that were distributed on the market very quickly in order to be sold or retailed. As they are certainly sold or retailed very quickly, they are to be considered as having been made available to the public even if there is no specific proof for a sale. Therefore, the operating manual that was delivered together with a TV set had to be offered for sale during the months following the date of impression, and, as a consequence, had been made available to the public. This case is not to be equated with the present case either because pigment mixtures cannot be considered to be mass products.

[1.3.4] Therefore, the Board comes to the conclusion that there is no proof whatsoever that the documents D2 and D13 and the product disclosed therein had been publicly available before the priority date or the filing date of the impugned patent.

[1.3.5] The documents D8a, D8b and D8d are product specification sheets of the products Biju® Ultra UXD of the BASF Corporation, Timica Extra Large Sparkle Product No. 110S of the Mearl Corporation and Suspending Lacquer SLF-2 of the Mearl Corporation.

Document D8a of the BASF company has a revision date Rev.3 (3/7/95) of 1995 and another date of 2007. Thus there is no doubt that this document is not part of the state of the art.

D8a - click to enlarge

Although document D15 explains in point 9 that the product Biju® Ultra UXD was sold by the Mearl corporation and the Engelhard corporation between 1994 and 1999, there is no evidence that a product specification sheet with the features listed in document D8a was indeed made available to the clients during this period without any obligation of secrecy, or that the original revised version of 1995 – which has not been filed – had been made available to the clients of the then product proprietor, the Mearl corporation, without any obligation of secrecy or had been sent to the clients at all.

The product specification sheets D8b and D8d have the dates 10/81 and 3/87 and 11/85, respectively, which point towards periods before 1990. Therefore, the declaration of Mr Ozimek, who had only been hired by the Mearl company in 1994, are irrelevant in respect of those documents.

D8b - click to enlarge

D8d - click to enlarge

Moreover, the word “obsolete”, which means “out-dated”, has been stamped on those sheets. Although the [opponent] has declared during the oral proceedings that the word was stamped by the BASF corporation, i.e. after 2006, in order to mark products that were not commercialised any more, there is no evidence whatsoever that this had not been done by the previous product proprietors and that those sheets have been made available to the clients without any obligation of secrecy, or had been sent to the clients at all.

The further arguments made above in respect of documents D2 and D13 also apply to those documents in an analogous way.

[1.3.6] As it has not been proven that documents D2, D8a, D8b, D8d and D13 were available to the public before the priority date or the filing date of the impugned patent, these documents are not to be taken into account any more.

The Board then found the main request to be novel and remitted the case to the OD for further prosecution.

I may be wrong but I think that the Board should have mentioned one important fact:

In the present case, the alleged prior use/disclosure was made by the opponent company itself, which means that the facts have to be proven “up to the hilt”. As a matter of fact, T 472/92, which is cited in the present decision, has established that

“[a]lthough the standard of proof is the same for all objections covered by A 100 (cf. T 270/90), in those prior public use cases, where practically all the evidence in support of an alleged prior public use lies within the power and knowledge of the opponent, the latter has to prove his case up to the hilt.”

In T 804/05 the advertising leaflet was issued by Italian company Kariba S.p.a, which had no apparent link with the opponent, Italian company Crevan.

In T 743/89, the flyer was issued by Borg-Warner Chemicals Inc.; the opposition was filed by Ciba-Geigy.

Finally, in T 55/01, the opposition was filed by Interessengemeinschaft für Rundfunkschutzrechte GmbH; the operating manual was sold by the Metz company.

So in all those cases, the standard to be applied was the balance of probabilities, whereas in the present case, the more strict “up to the hilt” standard is appropriate. For this reason alone, the cited decisions are not relevant and the Board’s arguments concerning the different nature of flyers and product specification sheets etc. appear to be unnecessary.

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

The file wrapper can be found here.