The opponent (the Thor company) filed an appeal against the decision of the Opposition Division to maintain the opposed patent as amended.
The opponent’s argument was essentially based on Mr Rüdiger Baum’s diploma thesis (Diplomarbeit), hereinafter referred to as D1, and disclosures related to it.
According to the opponent, D1 was handed over to Mr Schmidt, manager of Thor who is to be considered as a member of the public, in 1993. The content of D1 was also made available to the public in a presentation held on May 11, 1993.
In what follows, the Board deals with these disclosures:
[5.1] The opponent alleged that before the priority date of the patent in suit the invention had been made available to the public pursuant to A 54(2) through the “diploma thesis” (document D1). It was contended that the content of the “diploma thesis” was disclosed during the oral presentation (hereinafter “colloquium”) at the Fachhochschule Mannheim on 11 May 1993 and by handing over of a copy of the diploma thesis to Prof. Dr. Palmer and to Mr Hans-Jürgen Schmidt in May 1993 (hereinafter disclosure “Schmidt”).
“Colloquium”
[5.2] It has to be decided whether the information content that was presented during the “colloquium” was such as to destroy the novelty of the patent in suit and, if necessary, whether the oral examination was open to the public.
[5.3] Concerning the content of the disclosure, the evidence relied on to establish the information content conveyed to the public by an ephemeral disclosure, such as a lecture or an oral presentation, must be such that the Board is certain beyond any reasonable doubt that a particular piece of information was made available to the public.
In the present case the Board is not convinced beyond any reasonable doubt that the specific piece of information concerning the use of a low concentration of copper in isothiazolone formulations as a stabiliser and in particular Fig. 6 of the diploma thesis D1 has been clearly and unambiguously disclosed during the colloquium […].
[5.4] In its communication dated 13 May 2011 the Board has drawn the parties attention to decision T 1212/97, which had to resolve the question whether there is any safe and satisfactory evidence as to the information content of what was made available to the public by a lecture. The present board holds that the principles set out in T 1212/97 (affirmed by T 12/01 [20]; T 667/01 [2]) apply to the present case.
[5.5] In T 1212/97 [3] the Board did not consider evidence from the lecturer alone as being satisfactory evidence as to what was made available to the public at the lecture. The present board agrees with the approach of the board in T 1212/97. For this reason alone the declarations of Mr Baum submitted during the written procedure concerning the content of his oral explanations during the colloquium as well as his respective testimony cannot be regarded as sufficient evidence of which information and details have clearly and unambiguously been conveyed to the “audience” at the colloquium. The present board considered that no useful purpose would be served in summoning Mr Baum again as a witness, since further evidence from him would not serve to make up for the lack of evidence from the “audience” at the colloquium.
[5.6] When the question to be resolved is whether there is any safe and satisfactory evidence as to the information content of what was made available to the public by a lecture or an oral presentation, information appearing in written notes made at the lecture by at least two members of the audience can usually be regarded as sufficient, whereas information in the notes of a single member of the audience might be inadequate as reflecting the thoughts of the listener rather than the content of the lecture (T 1212/97 [4]).
[5.7] Apart from the declarations of Mr Baum […] there is only one further single statement stemming from the “audience” of Mr Baum’s oral presentation during the colloquium, namely the declaration of Prof. Dr. Palmer of 6 April 2006 (document (10)), who was one of the two examiners. He stated
“… daß ich, … zum Thema dieser Diplomarbeit … ein … Kolloquium durchgeführt habe, bei dem die Ergebnisse der schriftlichen Diplomarbeit von Herrn Rüdiger Baum im Detail erörtert wurden”.
[“… that I have organised a … colloquium … on the topic of this diploma thesis, in which the results of the written diploma thesis of Mr Rüdiger Baum were discussed in detail”]
This is a general statement which cannot be regarded as sufficient evidence of which technical details were made available to the “audience” and whether those results which are relevant with regard to the assessment of the patentability of the patent in suit had been discussed. In addition, this is evidence from only a single member of the “audience” which is regarded as inadequate to serve as evidence for the content of the oral presentation (see T 1212/97 [4]).
[5.8] In T 1212/97 [4] the board further held that if the lecturer read his lecture from a typescript or manuscript the written version might be taken as some evidence of the contents of the lecture, though with some caution as there would be no guarantee that a script was completely and comprehensibly read. With its letter dated 8 March 2010 the [opponent] filed a written declaration E3 […] of Mr Baum dated 8 February 2010 and as “Anlage B” a written version […] of Mr Baum’s oral presentation at the colloquium which would reflect nearly the exact wording of his lecture. Apart from the fact that the patentee/respondent has raised objections and doubts as to the availability of the format “Microsoft Works 4.0.” in which “Anlage B” had allegedly been generated in May 1993 this document has to be left out of consideration, since this document has been regarded as late filed and has therefore not been admitted in the present appeal proceedings.
[5.9] In the annex to the summons to OPs dated 13 May 2011, the board had already indicated that according to its preliminary opinion the documents filed with the [opponent’s] letter dated 9 March 2010 (inter alia “Anlage B”) were regarded as being late-filed and would probably not be admitted in the proceedings.
However, the [opponent] also failed to put forward any convincing reasons on the occasion of oral proceedings why such an important document as the alleged written version of his lecture held at the colloquium had not been submitted earlier, in particular with the notice of opposition of 9 May 2006 or with the statement of grounds of appeal of 29 June 2006 at the latest (See Article 12(4) RPBA). Taking into account the filing of this document at a relatively late stage of the proceedings and in view of the remaining doubts as set forth in the respondent’s letter dated 29 July 2010 as to the availability in May 1993 of the format “Microsoft Works 4.0.” in which “Anlage B” had allegedly been generated, the board exercises its discretion according to Articles 12(4) and 13D1 RPBA not to admit document (30) (“Anlage B”) in the proceedings.
[5.10] Since for the reasons given above it cannot be established beyond any reasonable doubts that during the colloquium technical information was made available to the “audience” that is allegedly contrary to the patentability of the patent in suit, the subsequent question whether the colloquium was open to the public is no longer relevant for the decision in this appeal case and therefore does not need to be answered.
Disclosure “Schmidt”
[5.12] It has not been disputed by the patentee that a copy of the diploma thesis (document D1) was handed over to Mr Schmidt by Mr Baum on the day of the colloquium on 11 May 1993 at the latest and thus clearly before the priority date of the patent in suit. Thus Mr Schmidt was able to gain knowledge of the content of document D1.
Document D1 […] discloses compositions in which the stability of CIT is investigated in a 10% aqueous solution of Acticid 14 and different amounts of Cu**(2+)(see page 32, paragraph 4.3.3., essays 6 to 8; corresponding to feature “c)” of claim 1). The 10% Acticid 14 used in the said compositions is a solution containing 15% of magnesium nitrate (see document D1, page 28, lines 6-7; corresponding to feature “b)” of claim 1) and 14% of IT (corresponding to a mixture of 25% MIT, namely 2-methylisothiazolin-3-one and 75% CIT, namely 5-chloro-2-methylisothiazolin-3-one, see page 8, lines 9-10). These 14% IT correspond to feature “a)” of claim 1. The water being present in Acticid 14 corresponds to feature “d)” of claim 1. Consequently, document D1 discloses in combination all the features of claim 1 of the second auxiliary request.
[5.13] However, the question arises whether the content of document D1 was made available to the public. This would not be the case if Mr Schmidt was at that time under an obligation to maintain secrecy regarding the content of the diploma thesis. Such an obligation may be based on an explicit or a tacit agreement or may stem from the circumstances of the case and derive from the principle of good faith and mutual trust. According to the Case Law of the Boards of Appeal information cannot be regarded as made available to the public for the purpose of A 54(2) and the recipient of that information cannot be treated as a member of the public, if at the time of receipt of the information he is in some special relationship to the donor of the information (T 1081/01 [7]).
[5.14] It could not be ascertained that there was any explicit secrecy agreement between the parties involved. However, based on the special circumstances and facts underlying the present case the board considers that there was such a special relationship in the sense of T 1081/01 between Mr Baum and Mr Schmidt and Thor GmbH. As a consequence of these circumstances Mr Schmidt cannot be regarded as part of the public. Thus Mr Baum, by handing over a copy of the diploma thesis to Mr Schmidt, did not make the technical information content of document D1 available to the public pursuant to A 54(2). There is also no evidence that Mr Schmidt or other members of the staff of Thor made available technical information stemming from the diploma thesis (document D1) to the public (see below […]).
[5.15] The conclusion that there was a special relationship between Mr Baum and Mr Schmidt and Thor, of which Mr Schmidt was and still is the managing director, and also responsible for research and development, is in particular based on the results of the hearing of the witnesses before the OD. The following circumstances and facts are essential and decisive for the assumption of this special relationship.
[5.16] Mr Baum was employed by Thor GmbH before he started his academic education. After he had finished his academic education and passed his diploma exam he was again hired in May 1993 and since then has been employed by Thor GmbH as a chemical engineer. In the course of his studies at the Fachhochschule Mannheim Mr Baum made his traineeship (“Praxis-Semester”) and the “Diplom-Semester” with the company Thor. During his studies Mr Baum was not employed by Thor GmbH but was sponsored by the company.
[5.17] The subject of the diploma thesis pertains to the field of isothiazolone, and in particular the stabilisation of isothiazolone-containing formulations by copper ion, which also belongs to the business and research activities of the company Thor GmbH. Mr Schmidt stated in his testimony that the results found by Mr Baum could be used for further formulations, even if the results of the diploma thesis were not commercialized and not made the subject of a patent application. The diploma thesis was developed in close collaboration with the company Thor. Mr Baum declared in his witness statement that he discussed technical issues of his diploma thesis and exchanged views with Mr Zinser, the then Head of the Research and Development division of Thor, as well as with Mr Schmidt, who was also concerned with isothiazolone-products. Mr Schmidt declared that it is crucial when assigning a subject-matter for a diploma thesis to a student that there is a synergy effect between the diploma thesis and the concerns of the company. He explained in his testimony that the 5-chlor-2-methylisothiazolinone, which was one of the main subject-matters of the diploma thesis was a very important product for Thor. The stabilisation of formulations was a special issue which was important for Thor’s clients, and that Mr Baum had indeed come to some new findings regarding stabilising agents, which have also been used for further formulations.
[5.18] The close relationship between Mr Baum and the company Thor/Mr Schmidt is also evidenced in the sponsoring of Mr Baum by Thor during his academic education and the drawing up of his diploma thesis. Mr Schmidt stated […] that it was in the interest of the company to promote the education of its employees and that sponsorship enabled the employees to complete their academic education and Thor to have better qualified employees.
[5.19] From the circumstances and facts mentioned above it emerges that there has been a special relationship between Mr Baum and Thor and Mr Schmidt mainly based on the previous and subsequent employment of Mr Baum at Thor GmbH, the importance of the subject-matter of Mr Baum’s diploma thesis for the company and the sponsoring of Mr Baum by Thor GmbH during his academic education. This close occupational relationship gave rise to a relation of mutual trust and confidence. Thus it would contravene accepted commercial practices if one would assume that Thor or Mr Schmidt felt completely free to, or could be expected to readily disclose the technical subject-matter and technical details of the diploma thesis to the public or third parties without any secrecy obligation. In fact, it is normally in a company’s interest to keep research results, such as in Mr Baum’s diploma thesis, in confidence, since they constitute the company’s know-how and the basis for future products. It has neither been proven nor does it appear to be credible that Thor or Mr Schmidt provided such information to the public.
[5.20] It has not been suggested that Mr Schmidt or the staff of Thor GmbH actually made available the technical content of document D1 to members of the public.
Mr Schmidt testified that the results of the diploma thesis have of course been discussed intra-company. However, the staff of a company is normally not regarded as being member of the public, unless there is proof to the contrary (T 1085/92).
[5.21] Mr Schmidt stated that the technical content of document D1 was also discussed with Thor’s service technicians and chemical engineers, who are involved in the support service and in the advising of customers. However, it has not been alleged by the opponent that any technical information stemming from the diploma thesis (document D1) was made available to any members or other persons outside of Thor.
[5.22] Furthermore, according to the declaration […] of Mr Leonhard (Rector of the Fachhochschule Mannheim) dated 16 June 2008 the diploma thesis of Mr Baum has not been made available to the public by putting it on the library shelves of the Fachhochschule Mannheim. This has not been disputed by the opponent.
[5.23] The provision of a copy of the diploma thesis to Prof. Dr. Palmer does not render the content thereof publicly available either, since the professor grading the thesis cannot be regarded as a member of the public.
After all it cannot be established that the content of document D1 belongs to the state of the art pursuant to A 54(2).
[5.24] Since document D1 does not represent a prior art document according to A 54 and since the board as well as the [opponent] agrees that no other cited document calls into question the novelty of the claimed subject-matter, the board concludes that the subject-matter of the claims of the second auxiliary request is novel (A 54).
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