T 1245/09 – Ten Years After

The opponent filed an appeal after the Opposition Division (OD) had maintained the opposed patent in amended form.

In what follows the Board dealt with the admissibility of documents D7, D8, D17, D18, D30 related to a seminar held in 1990, which documents had been filed belatedly during the opposition proceedings. Document D30 was a compilation of documents D7, D17 and D18.

The patent proprietor pointed out that it was unknown whether these documents were distributed at the seminar or afterwards. Moreover, it was not known whether the seminar was public and whether the participants were bound by a confidentiality agreement.

[2.1] Documents D7, D8, D17, D18, D30 are written disclosures allegedly relating to presentations held in September 1990 at the Stratco 1990 Alkylation Seminar. In the oral proceedings before the Board the [patent proprietor] did not doubt that the documents of the Seminar were distributed to the participants of this seminar. The issue was rather, when this happened, whether the seminar was open to the public and whether the participants were bound to a confidentiality agreement.

[2.2] The introduction of document D30 was already refused by the OD given the late stage of the procedure at which the introduction of D30 was proposed. Additionally, the individual parts of this document, i.e. D7, D17 and D18 were already part of the procedure.

[2.3] The Board does not see any reasons for deviating from the OD’s view. Even more so, as each of the individual disclosures represents an individual lecture. The fact that they were held by the same lecturer does not necessarily mean that their contents have to be seen in context. On the contrary, in particular D17 appears to be an independent lecture given the structuring and the index of the individual chapters as shown on page 2.

Thus, the Board does not introduce D30 into the appeal procedure.

[2.4] With regard to the individual documents D7, D8, D17, D18 no proof has been submitted by the [patent proprietor] supporting the allegation that the seminar was not open to the public or that the participants were bound by a confidentiality agreement. It was not denied by the [patent proprietor] that the seminar’s participants received the printout of the written submissions. The only question to be clarified is, whether this happened at the seminar or some time, i.e. a couple of weeks or months later.

However, this question is of no relevance for the present appeal, as the seminar took place in September 1990, whereas the priority date of the patent-in-suit is March 2000. Given the length of this period, the skilled person was certainly able to obtain the documents well before the present priority date.

[2.5] Given the fact that a confidentiality agreement or restrictions in the participation of the seminar have not been proven and that the priority date of the patent-in-suit is almost ten years after the seminar, documents D7, D8, D17, D18 are considered to have been publicly available at the priority date of the patent-in-suit and to represent state of the art according to A 54(2) EPC (1973).

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A French summary has been made available to the public by Laurent Teyssèdre (here).