T 1440/09 – Unaware

In this examination appeal the applicant contested the public availability of document D1.

[2.1] The appellant did not contest that D1 had been on the internet before the earliest priority date of the present application (19 October 2005) at the URL indicated in the European search report. Moreover, the appellant did not contest that D1 is a contribution submitted to the Joint Video Team (JVT) for its 15th meeting in Busan, KR, which took place from 16 - 22 April 2005, several months before the above earliest priority date. Furthermore, the board notes that none of the documents on file indicates that contributions to JVT meetings are to be kept confidential even after the meeting in question.

[2.2] The appellant however argued that D1 may have been confidential at the priority date of the present application, in view of the “JVT Patent Disclosure Form” which indicated that the submitter of D1 was “not aware of having any granted, pending, or planned patents associated with the technical content of the Recommendation | Standard or Contribution” (emphasis by the board) and in view of the fact that the present application had been filed by the submitter after the submission of D1 to JVT. This argument seems to be based on the understanding that one purpose of the “JVT Patent Disclosure Form” was to protect the submitter from its contribution to the JVT meeting being held against its own later patent application.

[2.3] The “JVT Patent Disclosure Form” on pages 9 to 12 of D1 is a standard, preprinted form appended to the submitter’s contribution. It provides the JVT with information about the patent status of techniques used in or proposed for incorporation in a recommendation or standard. JVT requires that all technical contributions be accompanied by this form. The intent is that the JVT experts should know in advance of any patent issues with particular proposals or techniques, so that these may be addressed well before final approval. The information is maintained in a “living list” by JVT during the progress of their work, on a best effort basis. The form is not a binding legal document; it is provided to JVT for information only […]. The patent issues may concern patents of the submitting organisation or person […] or of a third party […].

[2.4] The standard, preprinted “JVT Patent Disclosure Form” does not comprise any explicit indication that the technical contribution of the paper it accompanies should be kept confidential.

[2.4.1] Furthermore, in the case of D1 it is not even clear if an initially blank “JVT Patent Disclosure Form” has been completed at all, since the details concerning the submitting organisation are missing on page 10 of D1. The only box of the “JVT Patent Disclosure Form” which has apparently been ticked by the submitter is point 2.2, according to which the submitter (namely the patent holder of the granted, pending, or planned patents) is prepared to grant a licence under certain circumstances. However, any corresponding information as to the patent number(s) or status, and the inventor(s)/assignee(s) of the granted, pending, or planned patents is missing. Nor did the appellant contend that a corresponding disclosure form existed which had been filled in with information from which the appellant derived its argument of confidentiality. Thus there is no indication that the “JVT Patent Disclosure Form” in D1 relates to any specific patent application or patent or in particular to the present patent application.

[2.5] The mere fact that the submitter of contribution D1 might have ticked the box that it was “not aware of any granted, pending or planned patents associated with the technical content of the Recommendation | Standard or Contribution” in point 2.0 of the “JVT Patent Disclosure Form” does not imply that the contribution D1 was to be kept confidential by any person to whom it was available.

[2.6] In view of the above the appellant’s arguments did not convince the board, and thus the board finds that D1 constitutes prior art under A 54(2) EPC 1973 for the present application.

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