The present decision deals with the admissibility of an opposition based on a prior public use – raised for the first time during appeal proceedings - and gives a useful overview of the relevant case law developed by the Boards of appeal on the substantiation of prior public uses, taking into account the offer that witnesses be heard.
NB: All legal provisions refer to the EPC 1973.
NB: All legal provisions refer to the EPC 1973.
*** Translated from the German ***
 In its statement of grounds of appeal the [patent proprietor] pointed out for the first time that the opposition was inadmissible because it was not sufficiently substantiated. The EPO has to examine the admissibility of an opposition of its own motion, at any stage of the opposition and subsequent opposition appeal proceedings (T 289/91). This means that the Board has to examine the admissibility of the opposition in appeal proceedings even if the objection of inadmissibility is, as in the present case, raised during the appeal proceedings for the first time (see T 289/91 [2.1]).
 Whether an opposition is sufficiently substantiated is to be assessed by taking into account the content of the notice of opposition as well as further documents submitted during the time limit for filing an opposition, as the case may be, because it is not possible to correct deficiencies after expiration of this time limit (see also T 522/94). As a consequence, as far as the question of whether the [opponent] has complied with its duty to substantiate and whether its opposition may be considered admissible is concerned, only the legal and factual situation at the expiration of the time limit for filing an opposition is relevant (see T 1019/92). As the time limit for filing an opposition under A 99(1) had already expired on December 13, 2007, the moment of entry into force of the revised version of the EPC, the relevant provisions of the EPC 1973 are to be applied for answering the question of whether the opposition was sufficiently substantiated.
 According to the case law of the Boards of appeal the requirement of R 55 c) is fulfilled if the contents of the notice of opposition are sufficient for the opponent’s case to be properly understood on an objective basis, so that both the patent proprietor and the Opposition Division (OD) know what the case is about (see T 222/85 ). The facts submitted for substantiating the opposition have to be sufficient for the Board and the patent proprietor to be able to understand the submission without further investigations. (see T 222/85 and T 2/89). However, it is acceptable that they have to undertake a certain amount of interpretation (T 199/92 [1.2]).
Nor is it necessary that the facts and evidence submitted for justifying [the opposition] be so complete that a definitive examination is possible on this basis alone (see T 1069/96). Moreover, it is not required that the notice of opposition be valid (stichhaltig) (see T 222/85) or sound (in sich schlüssig) (see T 234/86).
 In the case of an alleged prior use, an opposition is deemed to be sufficiently substantiated if [the notice of opposition] indicates, within the opposition period, all the facts which make it possible to determine the date of prior use, what has been used, and the circumstances relating to the alleged use, as well as the evidence [presented in support of the grounds of opposition]. (see T 328/87). Thus the notice of opposition – possibly taking into account other documents filed within the time limit for filing an opposition - must indicate “what” was made available “when” and under what circumstances, in particular “to whom” (see T 522/94).
 The present opposition as presented in the notice of opposition is based exclusively on two prior uses concerning a spring brake actuator for industrial trucks (Flurförderzeuge).
 As far as the first public prior use (“prior use Lenze”) is concerned, the notice of opposition as a whole and the submissions under point 4.1 in particular contain the allegation that the company Lenze GmbH &Co. KG had supplied two-stage spring brake actuators bearing the reference 14.442.12.100 to the [opponent] since 1993, without there being any secrecy obligation. Thus, the notice of opposition already indicated when (since 1993) and under which circumstances (delivery of a product by one company to another without any secrecy obligation) the prior public use allegedly has taken place.
The [patent proprietor] has expressed doubts regarding the “prior use Lenze” by referring to the copyright note on drawing D10 and to the supply of “prototypes” according to the facsimile D8, because there was a customary, tacitly agreed secrecy obligation when companies joined in view of a common product development. Therefore, [the patent proprietor] was of the opinion that there was no indication in the submissions related to the opposition that [the product] had been made accessible to the public, so that the opposition was inadmissible. The Board cannot endorse this opinion. There was a concrete assertion in the notice of opposition that the delivery was made “without any obligation of secrecy”. Whether this assertion is correct - i.e. whether the alleged prior use was indeed made accessible to the public – is not relevant for the admissibility (see T 1022/99 [2.2]) Thus the objections of the [patent proprietor] are not relevant for the assessment of the admissibility of the opposition, but only, as the case may be, for the substantive assessment – that is to say, for the examination of the allowability of the opposition.
 As far as the object of the “prior use Lenze” is concerned, the submissions in the notice of opposition regarding the features of the delivered spring break actuator explicitly refer to the filed drawings (D6, D9, D10 and D12) and to the extracts from post-published manuals (D3 and D7). As a rule, the features of the claim under consideration have to be compared with the features of the object of the prior use and the technical relationships have to be pointed out (T 28/93 [4.1]). However, when the factual situation is simple, as in the present case, such indications may be omitted if they are directly understandable for the average skilled person (see T 1069/96 [2.3.3]) The technical features of the spring break actuator that is the object of the alleged prior use can be gathered from the submissions in the notice of opposition, and in particular construction drawing D6. In line with the indications of schematic diagram D12, a complete break, including the additional hydraulic activator, can be recognized in construction drawing D6. How the break functions can be seen from the schematic drawing D12 and the extracts from the post-published manuals D3 and D7. The Board is of the opinion that this discloses the technical features of the spring brake actuators that have been used and allows for a comparison with the features of claim 1 as granted, without requiring undue efforts. It is irrelevant whether the used object really had those features because the validity or soundness of the submissions related to the opposition is not relevant for the assessment of admissibility (see point  above). Whether the documents already filed or indicated (including the designation of a witness for a later hearing) provide evidence for the factual assertions of the opponent or not – for example, because they are contradictory – is a question related to the consideration of evidence, which has to be treated when assessing the allowability of an opposition. Therefore, the submissions of the opponent concerning the object of the alleged prior use are sufficiently substantiated, too.
|D6 (click to enlarge)|
 Together with the notice of opposition, the opponent has filed written evidence and offered witnesses as proof for the prior use Lenze which it alleges.
The Board agrees with the [patent proprietor] that a global offer of a witness hearing cannot replace deficient factual submissions. However, in the present case, the facts regarding the alleged prior use were substantiated within the time limit for filing an opposition (see points  and  above).
However, the Board cannot share the opinion of the [patent proprietor] that for an opposition to be admissible, it is necessary, not only to designate witnesses, but also to indicate what the designated witnesses are to declare. Pursuant to R 55 c), the notice of opposition only has to indicate the evidence. The evidence itself can be filed after the expiration of the time limit for filing an opposition, because R 55 c) does not provide that the indicated evidence has to be filed within the time limit for filing an opposition (see T 328/87).
Therefore, the designation of witnesses for a later hearing is to be considered to be a sufficient indication if evidence, provided that it is clear which factual assertions are concerned by the witness designation (für welche Tatsachenbehauptungen der Zeuge benannt wird). However, the Board does not consider an indication of the concrete allegation to be proved (Angabe eines konkreten Beweisthemas) to be necessary. It is not necessary to indicate what the witness can declare on the alleged facts, either.
In the present notice of opposition, the opponent offered evidence by means of witness hearings regarding the alleged prior use Lenze, which the Board believes to be sufficient for complying with the requirements of R 55 c). Moreover, this requirement is already complied with by the written submissions contained in the notice of opposition.
The argument of the [patent proprietor] according to which the witnesses offered for establishing the public nature [of the prior use] cannot be considered as evidence because the witnesses cannot report on the delivery based on their own experience, also addresses the question of whether the evidence is sufficient for acknowledging the existence of a prior public use. However, this is only to be assessed during the examination of the allowability of the opposition.
Thus at least the prior use Lenze, which has been pointed out in the notice of opposition within the 9-month time limit for filing an opposition under A 99(1), has been substantiated. The Board is convinced that the indications related to the facts and evidence justifying the grounds of opposition that have been raised are sufficient for complying with the requirements of R 55 c). Therefore, the opposition is admissible, be it only for the first alleged public prior use Lenze. As a consequence, the second alleged public prior use Jungheinrich is not decisive for the admissibility of the opposition any more.
I shall report on another aspect of this decision in a forthcoming post.
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