T 443/09 – Your Mess, Your Problem

The opponent filed an appeal against the decision of the Opposition Division which maintained the opposed patent in amended form.

Independent claim 1 of the request before the Board read as follows:

A process for producing dimethyl ether comprising dehydrating methanol in vapor phase at a reaction temperature of 250ºC to 350ºC and a gas hourly space velocity (GHSV) of 900 1/h to 4000 1/h and a pressure of at least 0.0 MPa-G and at most 3.0 MPa-G in the presence of an activated alumina catalyst having an average pore radius of at least 2.5 nm and less than 5 nm and having a sodium oxide content of at most 0.07 % by weight, and collection of dimethyl ether produced.

The opponent argued that the subject-matter of claim 1 lacked novelty over the prior use of the catalyst T-126 as reported in annex A10 (copy of a letter dated 3 April 1990 sent by Prof. Levec to Dr. Stadler). Prof. Levec was not a consultant for the opponent and there was no confidentiality agreement. The process for producing dimethyl ether by dehydrating methanol in the vapour phase as reported in the letter was carried out at Ljubljana University prior to 3 April 1990 and was accessible to any students present at the university at that time. Despite extensive research, it was not possible to find Prof. Levec, nor to establish whether his laboratory in the university still existed. The affidavit of Mr. Selig (document D11) furthermore attested that the product designation T-126 was synonym to the designations Girdler T-126, DME-1; T-4021, CTR, CTR-Träger and DME/T-4021. The late-filing of these documents was due to the difficulty of retrieving old documentation in a big company such the opponent’s after twenty years and several moves.

The Board did not take into account this alleged prior use, for the following reasons:

[2] Document D11 and its annexes A1 to A10 are new evidence cited for the first time in the [opponent’s] Statement of the Grounds of Appeal. The [patent proprietor] objected to these documents being admitted into the proceedings for the reason that they were late-filed non-relevant documents.

[2.1] According to the established jurisprudence of the Boards of Appeal, the relevance of the late-filed evidence is a crucial criterion for deciding on its admissibility in the proceedings. However, other criteria are important, such as how late, whether the late submission of evidence constitutes an abuse of proceedings, or if their admission excessively delays the proceedings (see T 681/00 [2]; T 555/04 [1]). Thus, the Boards of Appeal, making use of their discretion under A 114(2) in order to ensure fair and prompt proceedings, are entitled to refuse to take them into account.

[2.2] In the appeal proceedings the [opponent] relied on a new alleged public prior use based on trials of dehydration of methanol by Prof. Dr. Levec, which allegedly had been made available to the public in the years 1989 and 1990 in the Department of Chemistry and Chemical Technology at the University Edvard Kardelj, Ljubljana, Slovenia.

The sole evidence filed by the [opponent] supporting this alleged public prior use is a letter dated 3 April 1990 sent by Prof. Dr. Levec to the [opponent’s] employee Dr. Stadler including the results of methanol conversion trials with a catalyst denoted as T-126 (annex A10).

[2.3] In connection with why the documents in support of the prior use were late-filed, the [opponent] argued that this was due to the difficulty in retrieving documentation in a large company such as Süd Chemie [i.e. the opponent] after such a long period of time. Furthermore, it was not to be expected that documents connected with projects which had been concluded 20 years ago to be archived for such a long time.

However, the [opponent’s] difficulties in finding documents within its own company is a self-created situation lying entirely within its own sphere of responsibility, which is not a reason to justify the admission of the late-filed documents purportedly showing a prior use (cf. T 508/00 [5.2]). 

Furthermore, the Board holds that of course the [opponent] is under no obligation to archive old projects. However, if it wishes to prove a prior use based on such a project, then it is the [opponent’s] duty to furnish the relevant documents in due time.

[2.4] With regard to the relevance of the late-filed documents, it needs to be established whether they are prima facie adequate to substantiate the alleged public prior use. In order to prove a public prior use, the date on which the prior use occurred has to be established, the circumstances surrounding the prior use and what was made available to the public.

[2.4.1] Regarding the question of when the prior use was made available to the public, the [opponent] merely indicated that it was prior to the letter (Annexe 10) dated 3 April 1990, but was unable to indicate a precise date.

[2.4.2] The circumstances surrounding the prior use are also not established in this letter. The [opponent] merely alleged that that there was no obligation of confidentiality, in particular that Prof. Dr. Levec was not a consultant of Süd Chemie, but was unable to indicate the reasons why this report was sent to Süd Chemie.

[2.4.3] Regarding the question of how the prior use was made available to the public, the [opponent] argued that students present at the University Edvard Kardelj at the time in question had access to the results of the methanol conversion trials. It further argued that according to decisions T 228/91, T 300/86, T 877/90, research carried out at a university is always considered as being available to the public.

A prior use should be regarded as made available to the public if, at the relevant date, it was possible for members of the public to gain knowledge of the particular use and there was no bar of confidentiality restricting the use or dissemination of such knowledge (see T 300/86 [2.1]).

In the present case, no evidence has been provided that the letter from the university professor to the employee of the [opponent] (annex A10) was available to the public. In the absence of such evidence, the Board holds that such a letter must prima facie be treated as a private communication. The [opponent] has also provided no evidence that students at the University Edvard Kardelj had access to the results of the methanol conversion trials in question. The mere statement by an employee of the [opponent], Mr Selig (see document D11, point 5) that the results of the methanol conversion trials were publicly available is not supported by any arguments or evidence as to how, where, when, and to whom they were accessible.

With regard to the cited decisions which apparently show that the Boards of Appeal always consider research carried out at universities to be per se available to the public, none of these decisions is in fact concerned with a prior use based on experiments carried out at a university. In any case, the availability to the public of a prior use must always be evaluated according to the particular circumstances of the case. In the present case, the circumstances surrounding the experiments carried out by Prof. Dr. Levec have not been made clear.

[2.4.4] Hence, the Board must come to the conclusion that the accessibility of the alleged public prior use by members of the public is not clearly established.

[2.5] In view of the above, the Board considers that the alleged public prior use, as relied upon in the [opponent’s] Statement of the Grounds of Appeal, is not substantiated. Thus, it is not necessary to determine whether the alumina denoted T-126 used in the trials as reported in annex 10 meets the requirement of the alumina set forth in claim 1, which the [patent proprietor] had alleged it did not […].

[2.6] The submissions made by the [opponent] in respect of the public prior use shall therefore be disregarded under A 114(2).

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