T 1140/09 – Let’s Not Be Too Strict

This is an appeal of the opponents against the maintenance of the opposed patent in amended form.

One of the crucial issues was whether brochure E3 had been made available to the public.

[3.1] Document E3 is a brochure relating to a “Post Identification System”, in short named “PIDSY”, for identifying the person who deposited a bank note at a cash machine after the bank note has been determined as a counterfeit bank note at the central bank. The brochure relates to the own commercial product of [opponent 1] with the purpose of informing potential customers of this latest development. The board was able to ascertain that the original brochure E3, which was submitted during oral proceedings before the board, corresponded to the copy submitted with the notice of opposition. The text of document E3 is uncontested.

[3.2] However, the [patent proprietor] argued that it had not been shown by [opponent 1] “beyond reasonable doubt” that document E3 had been made available to the public.

It is established jurisprudence of the boards of appeal that information is available to the public if only a single member of the public is in a position to gain access to it and understand it, and if this member of the public is under no obligation to maintain secrecy (see Case Law of the Boards of Appeal of the EPO, 6th Edition 2010, section I.C.1.8.8). Whether or not a member of the public has actually accessed the information is irrelevant (see T 84/83 [2.4.2]).

As regards the standard of proof, according to established jurisprudence of the boards of appeal, it is generally the “balance of probabilities” (see Case Law of the Boards of Appeal of the EPO, 6th Edition 2010, section VI.H.4.3). Although earlier decisions have applied the standard “beyond reasonable doubt” or “up to the hilt” for alleged public prior use, the standard of proof for the public availability of commercial brochures applied by the boards, even in their recent decisions, is the less strict standard of “balance of probabilities” (see T 743/89 and T 804/05).

In view of the above the board considers the “balance of probabilities” to be the proper standard of proof to be applied for the question of the public availability of document E3.

However, the board finds for the reasons given below that the evidence presented by [opponent 1] is such that it would also meet the stricter standard of proof as proposed by the [patent proprietor], i.e. that the evidence would also prove the public availability of document E3 beyond reasonable doubt.

[3.3] In the board’s view it is clear that the designation “PIDSY” refers to one and the same system. There is no indication in document E3 that the system described in that document was an improvement of an earlier similar system. Rather, the system is apparently a new development which is intended to achieve compliance with the Council Regulation (EC) No 1338/2001 as well as the ECB framework agreement concerning cash recycling machines.

Furthermore, a version number of the system is indicated neither in document E3 nor in any one of the other documents E5-E13 relating to that document. In each of these documents merely the acronym “PIDSY” is used, sometimes supplemented by an indication that it is a registered trade mark.

Moreover, the indication in documents E10 and E11 that they concern a 4-page document is consistent with the number of pages of E3.

The board is therefore satisfied that the invoices E10 and E11 concern the drawing up and printing, respectively, of the brochure E3.

[3.4] Appellant I alleged that E3 had been distributed to visitors of its booth at CeBIT 2003 and thereby been made available to the public before the priority date of the opposed patent.

CeBIT is well-known to be one of the largest industrial fairs in the area of information technology. It goes without saying that it was in the own interest of [opponent 1] to inform as many potential customers as possible of the new product “PIDSY”, especially at an important industrial fair such as CeBIT 2003 at which many business deals are closed. Appellant I therefore had a strong interest that the brochure E3 would be available at the fair for distribution to visitors of its booth. Hence it would be implausible under these circumstances to assume any obligation of secrecy.

The invoice E11 contains details like colours, format, and paper related to the printing of the brochure E3. Furthermore, it is indicated in E11 that 1650 copies were delivered (“geliefert”), of which 100 to the industrial fair CeBIT (“Messe CeBIT”), and that the costs of transport to that fair would be invoiced separately.

In 2003 CeBIT took place from 12.03.2003 until 19.03.2003. The date 19.03.2003 of the invoice E11 is therefore consistent with the stated delivery to the fair.

In view of the above the board is satisfied that the brochure E3 was made available to the public at CeBIT 2003.

[3.5] Furthermore, in the present case there is a period of about 3 months between the delivery of the brochure E3 to [opponent 1] and the priority date 17.06.2003 of the opposed patent.

It was clearly in the interest of [opponent 1] to disseminate the brochure E3 as widely as possible.

The time following CeBIT 2003 falls into the period mentioned above. The board is convinced that during this period visitors of CeBIT 2003 who were not given a copy of E3 at the booth of [opponent 1] because of the limited number of copies available, received such a copy, e.g. by sending one of the 1550 copies received from the printing company (see invoice E11) by mail or by electronic transmission. Such electronic transmission is consistent with document E5 which shows the printout of an e-mail transmitting during the above period, namely on 11.04.2003, a PDF document comprising the string “BR_PIDSY_mar03_D” also appearing on the last page of the brochure E3 itself.

In view of the above the board is satisfied that the brochure E3 was also sent to potential customers before the priority date of the opposed patent.

[3.6] Since the brochure E3 has been made available to the public before the priority date of the patent in suit, it is regarded as state of the art within the meaning of Article 54(2) EPC 1973.

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