The opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.
One of the crucial issues was the availability of documents B1, B2 and B7 to the public.
Document B1
[2.1.1] According to the [opponent’s] own submissions […], it was the [opponent] that approached Prof. Mustacchi and commissioned a study concerning a process for concentrating tannin solutions using membranes. The study was carried out by the company ADES S.R.L. in collaboration with employees of the [opponent], was fully paid by the [opponent] and resulted in technical report B1, which mentions the involvement of inter alia Prof. Mustacchi […]. Copies of document B1 were given to the [opponent] in July 1997. None of this was disputed by the [patent proprietor].
[2.1.2] Document B11 is an offer and cost estimate signed by Prof. Mustacchi in the name of ADES S.R.L., and is addressed to the Nuova Rivart S.p.a., i.e. the present [opponent]. B11/B11’ specifies the price for carrying out a “Feasibility study for a tannin production plant” and refers to “preliminary contents” thereof indicated in “enclosure A”, which enclosure is not, however, part of the document B11.
For the board, B11 corroborates that it was the study commissioned by the [opponent] that led to the preparation of the report B1. It is also credible that the [opponent] paid an amount as specified in document B11 […] upon receipt of the report B1.
[2.1.3] As already noted by the OD, B1 is a company generated technical paper and can thus not be assumed to have automatically made its way to the public, see e.g. decision T 37/96 [2.1.2]. Moreover, the study which resulted in report B1 was commissioned and paid for by the [opponent], who provided the initial input, and closely cooperated with ADES S.R.L. during the study.
[2.1.4] Hence, the payment made by the [opponent] to ADES S.R.L. cannot be equated to a conventional sale of a printed company generated paper by a first company to any customer, i.e. an economically unrelated second company. On the contrary, the study was thus undertaken within the framework of a close technical/business cooperation between ADES S.R.L. and the [opponent]. Such a cooperation is usually based on trust and hence under a tacit confidentiality agreement.
For the board, the commissioning of the study established a special relationship (in the sense of decision T 1081/01 [6-8]) between the donor of the information, i.e. ADES S.R.L., and its recipient, i.e. the [opponent]. Consequently, in the board’s judgement, the [opponent] and its employees […] and consultants […] cannot be considered to be members of the public within the meaning of A 54(2).
[2.1.5] There is also no evidence on file, and it was not argued, that the content of document B1 was made available to any member of the public, i.e. to somebody unrelated to ADES S.R.L. or the [opponent] before the effective filing date of the patent in suit and without an at least tacit confidentiality agreement.
[2.1.6] In the board’s judgement it has not been shown that document B1 or its contents were made available to the public before the effective filing date of the patent in suit. Hence, the disclosure of document B1 does not pertain to the state of the art pursuant to A 54(2).
Document B2
[2.2.1] Document B2 is an offer bearing the number “Estimate P-3090” and made by Hydro Air Research S.R.L. This project cost estimate […] concerns a plant for treating a pre-filtered/clarified liquid containing tannin and stemming from a chestnut extraction step involving membrane ultrafiltration and evaporation to obtain a tannin concentrate.
[2.2.2] The offer had been requested by Sadepan Chimica S.R.L., a “sister company” of the [opponent] in the latter’s own words, i.e. a company in very close business relationship with the [opponent] […]. According to the [opponent], the offer is based on information, more particularly the content of document B1, provided by Sadepan Chimica S.R.L. to Hydro Air Research S.R.L. within the framework of a commercial relationship which is usually based on trust and hence under a tacit confidentiality agreement. The company Hydro Air Research S.R.L. can thus be considered as a “subcontractor” in the sense of decision T 799/91 [4.1]. Hence, the board does not consider it as any “third party” or “member of the public”. Moreover, said request for an offer clearly established a special relationship in the sense of decision T 1081/01 [6-8] between the donor of the information, i.e. Sadepan Chimica S.R.L. and the [opponent], and its recipient, i.e. Hydro Air Research S.R.L. Consequently, employees of the latter cannot be considered as members of the public.
[2.2.3] Moreover, there is no evidence on file showing that Hydro Air Research S.R.L. made document B2 available to a member of the public, i.e. to a person not employed by or in business relationship with Sadepan Chimica S.R.L or the [opponent].
[2.2.4] In the board’s judgement the content of document B2 was thus not made available to the public before the (effective) filing date of the patent in suit and without a confidentiality agreement. Hence, document B2 does not pertain to the state of the art pursuant to A 54(2) either.
Document B7
[2.3.1] Document B7 consists of a printout of web pages relating to membrane separation products commercialised by the company Millipore.
[2.3.2] According to the case law of the boards of appeal of the EPO, if an internet disclosure is to be used as prior art, a strict standard of proof should be adopted. The particular facts and evidence required will normally have to answer inter alia the questions of when the internet disclosure was made available to the public and under which circumstances it was made available to the public (see e.g. T 1134/06 [4.1]).
[2.3.3] The date on which the printout was made is not apparent from document B7. The printout could thus have been made when the opposition was filed, i.e. after the publication of the granted patent. Moreover, as was already noted in the contested decision, document B7 contains no reference to the date at which said web pages were uploaded and their contents thus made available to the public.
[2.3.4] No supporting evidence was provided during the opposition procedure which showed that the information content of B7 had been available to the public before the effective filing date of the patent in suit. Despite the findings of the OD and the general remark in the board’s communication […], no such evidence was submitted in the appeal proceedings either.
[2.3.5] Since the availability to the public of the information content of B7 before the effective filing date of the patent in suit is not proven, the board sees no reason for overturning the finding of the OD in this respect. Hence, in the board’s judgement, the information contained in document B7 does not pertain to the state of the art pursuant to A 54(2) either.
[2.3.6] The argument of the [opponent], according to which the date of the document “does not seem to be so important”, is rejected. Due to the missing publication date information, document B7 cannot even serve the purpose of establishing, as common general knowledge, that pre-filtration was a feature in common to all “SWM membranes” before the effective filing date of the patent in suit, as alleged by the [opponent].
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