Wednesday, 3 October 2012

T 358/10 – Waiting For Too Long

This is an appeal of the patent proprietor against the revocation of its patent by the Opposition Division (OD).

The OD had given its decision at the end of oral proceedings (OPs) held on January 30, 2008. The minutes were sent to the parties on September 8, 2009 (!).

According to the OD, claim 1 as granted lacked novelty over document D1, a set of several documents including D1a, D1b, D1f and D1g, D1a and D1g being copies of an extract from a commercial document of the opponent company, D1b a specifications manual, and D1f an internal note of the opponent company

The Board first dealt with the question whether D1a and D1g were indeed available to the public:

*** Translation of the French original ***

State of the art

Brochures D1a and D1g

[3.1] Documents D1a and D1g are commercial brochures the purpose of which is to present new products to potential customers. Both bear a editing date (March and September 1996, respectively), which is at least 18 months before the priority date claimed by the patent under consideration (May 27, 1998).

The Board does not agree with the patent proprietor’s argument according to which there was no tangible evidence for the diffusion of brochures D1a and D1g – such as an advertising insert in specialised technical journals – and that, therefore, their publication remained unproven.

According to the established case law of the Boards of appeal, the purpose of commercial leaflets is to be publicly distributed within a short period of time following their editing. In the present case, brochures D1a and D1g must have been diffused in the course of the year 1996, which is well before the priority date of the patent, i.e. May 27, 1998.

Moreover, in the absence of proof to the contrary, the investment [consisting in the editing] of brochures having several dozens of pages allows to conclude that their purpose was to be distributed, for obvious commercial reasons, among customers that might be interested in the product.

Consequently, documents D1a and D1g are part of the state of the art within the meaning of A 52(4).

Specifications manual (cahier des charges) D1b

[3.2.1] As for document D1b, which bears the date “June 97” and a validity date “July 2000” added by the Socotec verification office in the context of a technical investigation, it manifestly does not qualify as an advertising brochure such as D1a or D1g. As it title (“Specifications for use and implementation”) indicates, it is a specification manual, i.e. a manual or guide for using and implementing the “Quadracoustic compact 404” system.

[3.2.2] Thus there is no doubt that document D1b is only intended for the use by the technican and operator who assembles the covering system on a roof in strict compliance with the instructions regarding the installation of the system as established by the manufacturer, i.e., in the present case, the Isover Saint-Gobain company [the opponent]. This means that the diffusion of the manual D1b would not have made sense and would not have been useful before the product had been sold or at least ordered by the user/customer. Apart from the fact that the editing date or a possible date at which the specifications D1b have been made available to the public (Juin 1997 or July 2000) raises legitimate questions, the question of when it was made available to the public appears to entirely depend on the sale and subsequent distribution of the product.

This analysis of D1b is confirmed by the declaration of Mrs Le Bihan (last two paragraphs of D1e) where she has stated that:
  • D1b comprised “precise specifications regarding the installation” and “for guarantee reasons, … the customer had to be informed of the updated instructions” ;
  • D1b “has been sent to our customers as of that date”.
Normally [the term] “customer” refers to persons having bought the product, in contrast to what is referred to as “potential customers” who receive purely commercial documents that are, as a rule, devoid of any instructions on how the systems that are presented are to be used or implemented.

As for as D1f, the “internal note” dated August 25, 1997, it appears that this note was sent by Mrs Le Bihan to the Isover Saint-Gobain company (i.e. the department managers and the sales and marketing directors) for purely internal use. The assertion of Mrs Le Bihan, […] according to which D1b was made available as of July 1997 to “whomsoever requested it” appears to be unlikely and at least doubtful.

[3.2.3] Thus the Board has come to the conclusion that the date at which D1b was made available to the public cannot, as a consequence of its very nature, be dissociated from the sale or at least the prior order of the Quadracoustic Compact 404 system. However, the present file does not contain any tangible evidence proving that a commercial transaction had taken place before the priority date, and all the more so because the Isover Saint-Gobain company had filed its opposition in 2005, i.e. well within the legal ten-year-period during which companies have to keep their archives, which contain invoices and delivery orders.

To sum up, documents D1c to D1f, which have been filed in the course of the OPs before the OD do not establish with a fair degree of certainty (avec quasi-certitude) the date on which the specifications D1b was actually disclosed. Documents D1c to D1f, which have been filed very belatedly and without any justification for the delay, should not have been introduced into the proceedings.

The justification provided by the OD in its decision […] is very superficial and manifestly insufficently reasoned.  

[3.2.4] Moreover, the note contained in […] D1g, according to which
“The instructions of the ISOVER specifications that are specific to the method have to be observed.
The waterproofing has to be done in compliance with DTU 43-3 and the Technical Advice [Sheets] of the products to be used.”
are, in the absence of further indications, vague and imprecise regarding the details of the specifications.

Thus, contrary to the arguments of the [opponent], it is not possible to conclude that the leaflet D1g necessarily refers to the specifications for use and implementation according to D1b. Moreover, the leaflets D1a and D1g appear to deal with two variants of the Quadracoustic® system, i.e. the “quadracoustic compact” (D1a) and the “quadracoustic compact 404” (D1g), each having its own specifications, as the case may be.

[3.2.5] The Board comes to the conclusion that document D1b - on which the lack of patentability that had led to the revocation of the patent had been based - is not part of the state of the art within the meaning of A 54(2).

The Board then found claim 1 to be novel over D1a and D1g. Before remitting the case to the OD, the Board made a statement on the late transmission of the minutes by the OD, which it found to amount to a substantial procedural violation:

[5.1] Among the possible substantial procedural violations invoked by the [patent proprietor], the Board considers that the excessive delay for drafting and communicating the impugned decision and the minutes of the OPs in writing to the parties is decisive.

Pursuant to the provisions of R 111(1), a decision given orally in the course of OPs has to be put in writing and notified to the parties. The communication has to take place as soon as possible.

In the present case, the communication of the minutes of the OPs, dated September 8, 2009, 19 months after the OPs took place (January 30, 2008), and the communication of the written decision, dated December 14, 2009, 22 months after the decision had been given at the end of the OPs, constitute unacceptable procedural breaches (manquements) which in themselves are sufficient for ordering reimbursement of the appeal fee (T 243/87 [2])

It has to be noted in this context that such delays can generate errors in the drafting of the decision or the minutes.

Such errors are indeed apparent in the present case when the minutes and the impugned decision are compared. For instance, the grounds on which the OD based its admission of documents D1a to D1g and the conclusions it made regarding the lack of patentability in the decision revoking the patent […] differ significantly from what has been stated in the minutes […].

These anomalies make it difficult to understand what happened during the OPs, so that the Board is unable of piecing together the facts and details related to the course of the OPs before the OD and, as a consequence, of making objective statements on whether there was a contradiction between the decision and the minutes, as alleged by the [patent proprietor] in […] its statement of grounds of appeal.

Consequently, the substantial procedural violation consisting in the excessive delays of transmission of the official documents justifies that the impugned decision be set aside and the appeal fee reimbursed in application of R 103(1)(a).

[5.2] As a consequence it is not necessary to examine whether there have indeed been further substantial procedural violation, as alleged by the [patent proprietor].

NB: This confirms older case law such as T 900/02 [3] and the decisions cited therein.

Should you wish to download the whole decision (in French), just click here.

The file wrapper can be found here.