In this case the Board had to decide whether technical drawing D8 had been made available to the public before the effective date of the opposed patent.
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*** Translation of the German original ***
Request for a hearing of witnesses
[2.1] In a letter dated November 5, 2012, the [opponent] requested that the witnesses Arne Hermsen and Olaf Brockmann be heard. These witnesses had already been proposed in the notice of opposition dated November 13, 2008, but the Opposition Division had not heard them. The Board is of the opinion that – because of the circumstances of the alleged disclosure, in particular of D8, without any obligation to maintain secrecy – it is appropriate to hear the witnesses under A 117(1)(d).
[2.2] During the oral proceedings (OPs) before the Board, the [patent proprietor] requested the Board not to hear the witnesses. However, all the arguments presented by the [patent proprietor] in this context did not concern the question of whether a hearing would make sense, but the assessment of the written evidence already before the Board.
[2.3] Thus the Board decided to hear the witnesses Arne Hermsen and Olaf Brockmann on the assertion of the [opponent] according to which documents D8 and D9 had been made available to representatives of the Seondo company in May 1996 without there having been any obligation to maintain secrecy.
The status of document D8 as prior art
[3.1] During the OPs held on December 8, 2012, the Board has heard the witnesses Hermsen and Brockmann, both of which are employees of the [opponent]. The witnesses have described the circumstances under which the documents which are referred to as D8 and D9 in these proceedings were made available to representatives of the Korean company Seondo in early 1996.
[3.2] It all began with a round trip to various countries of Southeast Asia of the chief marketing director of the [opponent], Dr Voss, towards the end of 1995. The purpose of this trip was to establish new commercial contacts in order to strengthen the then rather weak commercial relationships to companies in these regions. It is in this context that a contact to the Korean company Seondo was established. This company was then dealing with a project of the state-owned Korean energy supplier KEPCO (Korea Electric Power Corporation). This project concerned the installation of 25.8 kV switchboards. In January 1996 there was a first meeting with representatives of the Seondo company, in the course of which the technical options that the [opponent] could offer were presented, i.e. purely cast resin insulated transformers, which were part of the standard production, as well as metal-encased transformers, none of which satisfied Seondo. The [opponent] was asked to prepare a proposal that was in line with the needs of Seondo and that would also be approved by KEPCO. This is what happened; finally drawing D9 was sent as a proposal solution to Korea. In March Seondo then asked [the opponent] to present this design with a primary circuit fuse (primärseitige Sicherung), which resulted in drawing EKM-Ps-96/08 being sent to Korea. However, Seondo sent the feed-back that KEPCO would not approve this solution because the device was too voluminous. There was a further meeting in May where a solution was sought in collaboration with Seondo, because the [opponent] was very much interested in concluding a deal. During this conversation the drawing referred to as D8 (drawing EKM-Ps-96/08 with handwritten remarks) was used as a basis for the discussions with Seondo. Finally a different technical solution was found and then also approved by KEPCO; however, only few of the corresponding devices were ordered and delivered. There was no concern of secrecy or confidentiality during the whole negotiations; the representatives of the [opponent] had not even considered this [issue].
[3.3] The Board is of the opinion that this factual situation is established on the basis of the testimonies of the witnesses Hermsen and Brockmann. Their statements corresponded to each other as to the core issues insofar as the factual situation was the same. The witnesses are consistent and plausibly describe the attempts of the [opponent] to gain a foothold on the Asian market, to adapt the existing offer and to tailor it to the needs of potential customers. In this context the approval of the product by the state-owned energy supplier KEPCO was always an underlying matter of concern. The statements are also consistent with the contents of the few documents on file regarding this context, i.e. D10, D11, D12, and D15.
[3.4] The arguments of the [patent proprietor] directed against the trustworthiness of the witness statements are not suitable for raising doubt on the trustworthiness of the witnesses or the credibility of their assertions.
[3.4.1] The [patent proprietor] first pointed out that the events mentioned by the witnesses had occurred more than 16 years earlier and expressed doubts that somebody could actually remember events belonging to the professional sphere so long after they had occurred. In this context the witness Hermsen has declared that this project had been his first big project in Southeast Asia, that he had put a great amount of time and energy into it and that it finally had ended in a disappointing manner because only few devices had been sold. The Board finds this declaration to be plausible. It is understandable that somebody would remember a big project at the beginning of his professional career which has had such an outcome, even after many years.
[3.4.2] The Board does not consider the alleged disagreement between the date 27.02.96 mentioned on D8 and the assertions of the witnesses to be a contradiction. Rather, this date confirms that the drawing EKM-Ps-96/08 was made by the technicians of the [opponent] on the company’s own initiative and not as a reaction to the invitation on behalf of Seondo (see also D12) received in March 1996. That this date is correct is also confirmed in D16.
[3.4.3] The Board does not attach much importance to the alleged disagreement regarding the handwritten remark on document D10. This is a minor issue that can hardly be clarified any more and that does not raise doubts regarding the declarations of the witnesses.
[3.4.4] Nor does the Board attach any importance to the fact that the [opponent] later filed an application (D7) which also contains the solution shown in D8. The witness Brockmann has declared in this context that he did not know the reasons [for this filing]; it was not part of his duties to decide on what would be the object of patent applications. In this context the Board notes that one can imagine many reasons why something that is not patentable from the start would be the object of a patent application, even if the applicant is well aware of the situation. However, such considerations are merely speculative and are not suitable for raising doubts regarding the statements of the witnesses.
[3.5] Thus the Board holds that the factual situation was such that the existence of a secrecy agreement was rather unlikely. This is because the present situation does not correspond to a collaboration between two companies in view of the development of a new product but to sales negotiations the first purpose of which was to tailor a product so that it would fit the expectations of the customer. The main issue was to create the basis for doing business at all. In this context the Board notes that a secrecy agreement, if such an agreement had been desired, would only have made sense if KEPCO had been included as well, because KEPCO had to examine and approve the design. However, it would have been very difficult, if not impossible, to include this [organism].
[3.6] If, according to the declarations of the witnesses, there was no explicit secrecy agreement, and if, considering the circumstances, such an agreement was not to be expected, then there is even less reason to assume a “tacit” secrecy agreement. The fact that D8 and D9 mention the DIN34 (cf. D17) cannot alter this conclusion. Thus the Board holds that documents D8 and D9 were part of the state of the art at the priority date.
The claimed subject-matter was then found to lack novelty and the patent was revoked.
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