T 109/11 – Speed-Dating Is Dangerous

This decision also contains some interesting paragraphs on how oppositions have to be substantiated, in particular when non-patent documents are cited.

*** Translation of the German original ***

  

[10] According to the established case law of the Boards of appeal, the requirement that [the opponent has] to provide an indication of the relevant facts and evidence (R 55(c) EPC 1973, last half sentence) is only met if the relevant facts and evidence are indicated so that they allow the Opposition Division (OD) and the patent proprietor to correctly understand the grounds for opposition that are invoked and their validity (Stichhaltigkeit) without further investigations, so that they can comment on them (cf. T 2/89 and T 328/87). The requirement “indication of the facts and evidence presented in support of the grounds” has to be understood to mean all facts on which the opponent bases the request to revoke the patent. In other words, the justification (Begründung) of the opposition has to present the circumstances that are relevant for the assessment of the ground for opposition that is invoked. Which circumstances are relevant depends on the individual case and follows from the overall context (cf. T 222/85). It is not possible to remedy deficiencies after the expiration of the time limit for filing an opposition if the justification of the opposition is insufficient (see T 522/94). In order to meet the requirements of R 55(c) EPC 1973, last half sentence, it is sufficient if one ground for opposition is sufficiently substantiated. One single substantiated objection, such as for example the objection of lack of novelty based on one of the documents, is sufficient to reach this goal.

[11] In the present case the opponent has cited the grounds for opposition “lack of novelty” and “lack of inventive step” as well as the ground for opposition pursuant to A 100(c) EPC 1973 in the opposition form, but in the justification only the ground for opposition “lack of inventive step” was explained in more detail: document A1 (JP 58224226 A (Abstract)) was discussed in combination with documents A3 and A5. Point 3.2 of the notice of opposition also cites document A8 (DE 196 01 517 A1), but only in combination with the above mentioned documents, i.e. in connection with A1 and A3 and A1 and A5, respectively. Thus the indication of the facts and evidence presented in support of this ground within the meaning of R 55(c) EPC 1973 is limited to the objection of lack of inventive step.  The opposition form does not contain any explanations regarding the grounds for opposition “lack of novelty” and A 100(c) EPC 1973. However, this does not have any influence on the admissibility of the opposition, because the notion of inadmissibility pursuant to R 56 EPC 1973 only refers to the opposition as a whole. If the requirements regarding admissibility are met for at least one ground for opposition, the opposition is admissible as a whole (see T 212/97).

[12] The explanations of the [opponent] regarding substantiation essentially consists in the following chain of arguments:

(a) R 55 EPC 1973 does not provide that documents cited against [the opposed patent] have to be dated or that their date (Zeitrang) has to be indicated;

(b) even if there was a requirement regarding [their] date, the dates provided on the opposition form met this requirement;

(c) the above mentioned dates are to be understood as print dates – regarding these dates one had to assume a prior publication (Vorveröffentlichung) of documents A3 and A5;

(d) the question of whether there had indeed been a prior publication was only to be examined when the allowability of the opposition was examined.

[13] As far as the first objection is concerned, it has to be noted that the facts and evidence presented in support of the ground for opposition within the meaning of R 55(c) EPC 1973 have to be provided for each ground for opposition. The ground for opposition “inventive step” in any case requires the indication of the relevant prior art on which the assessment of the inventive step is to be based in the opposition proceedings. In the present case the ground for opposition “inventive step” is based on a combination of documents A1 and A3, A1 and A5 as well as document A8 which is cited in the context of combinations of A1 and A3 and A1 and A5, respectively.

As a rule there is no need for explanations regarding the fact that patent documents have been published at a certain date, i.e. have to be considered as prior art, because the documents themselves provide a reliable (gesichert) publication date. In the present case, this applies to documents A1 and A8 because they are classical patent documents. However, if documents that do not disclose a reliable publication date are cited, it is necessary to discuss in detail the question of whether they belong to the prior art, i.e. the question of the date and circumstances of their publication, which is fundamental for the ground for opposition “inventive step”. In the present case, the documents A3 and A5 are not patent documents which themselves provide a reliable publication date, but assembly instructions (A3) and a company brochure (A5). As a rule, such documents do not contain a date of publication but at best an encoded print date or a date related to the prior art taken into account in the document, or the editorial deadline (Redaktionsschluss). In such documents, which are not classical patent publications, the requirement of substantiation is, as a rule, only met if [the opponent] cites concrete facts from which one can derive that they have been made available to the public before the priority date (cf. Podbielski, in: Singer/Stauder, EPÜ, 6^th edition, A 99, marginal number 87, which cites further authorities). Thus the presentation of the facts has to be such that it can be understood without further ado when and under which circumstances the alleged prior publication has occurred.

Therefore, the first objection of the [opponent] cannot succeed.

[14] Regarding the second objection of the [opponent], the following should be noted: In the case under consideration the documents A3 and A5 have been designated as “Company brochure assembly instructions CERAPUR (Ju 1336/1) February 1996” (A3) and “Company brochure Vaillant Thermoblock Klassik Heating Value VC/VCW 196 E-C, August 1998” (A5).

There were no further explanations regarding the above mentioned dates and the circumstances of a possible prior publication within the time limit for filing an opposition. Thus the question arises whether the [opponent] has met its duty of substantiation as to when and how the cited documents A3 and A5 have been made available to the public. In this context it has to be noted that the [opponent] has dated these documents in the opposition form, i.e. “February 1996” for A3 and “August 1998” for A5 – but that it has not pointed out whether these dates were to be understood as print or publication dates. Moreover, it is to be noted that there are no explanations in the notice of opposition as to whether these dates were taken from the documents themselves or from which pieces of information, possibly contained in the documents, they were derived. The Board is of the opinion that the dates are not disclosed in the documents themselves. As explained in the decision of the OD, document A3 contains several combinations of letters and numbers that can be interpreted as indications of date. First, on the right upper corner of the cover sheet there is the indication:

Moreover, on the right upper corner of the cover sheet there is the indication:

And on the last page (page 34) in the middle of the right margin there is the indication “11/95”:

The notice of opposition only contains the date “February 1996” without any further discussion of or reference to the information contained in A3. It is only in its letter dated September 30, 2005, i.e. after expiration of the time limit for filing an opposition, that the opponent has explained that the indication “JU 1336/1, 6 720 603 928 (2.96) PC - Pf” referred to the print date. For the sake of completeness, it also has to be mentioned that in the course of the oral proceedings on May 17, 2013, the [opponent] has explained, in view of the indication on the cover sheet (“29.09.95”) that this was the date of clearance (Freigabe). The fact that a document that was allegedly printed in the year 1996 contains a clearance date of 1995 remains unexplained. In any case, it cannot be the clearance of the present document A3, which was said to have been printed in 1996.

[15] As far as A5 is concerned, it has to be noted that this document also contains several combinations of figures and letters that can be interpreted as indications of date. First, the upper right corner of the cover sheet and the bottom of the right margin of the last page both contain the indication

And the bottom of the right margin of the last page contains the indication “subject to change A/0898 87 6108”:

In its letter dated September 30, 2005, i.e. after expiration after the time limit for filing an opposition, the opponent has explained that the latter indication allowed to derive a print date of “August 1998”.

[16] In view of what has been said above, the Board of appeal (BoA) reaches the conclusion that because of the ambiguity of the letter-number combinations in documents A3 and A5 the dates provided in the opposition form cannot be unambiguously derived from the documents themselves. Moreover, even when taking account of the contents of documents A3 and A5 it was not apparent whether the opponent wanted these dates to be understood as print or publication dates. For this reason alone it would have been necessary to discuss in more detail the question of the dates of the above mentioned documents within the time limit for filing an opposition. Moreover, it should be noted that – even if the later submissions of the [opponent] are considered – the dates contained in the opposition form are only print dates. Thus, even the submissions of the [opponent] lead to the conclusion that the question of the date, which is relevant for the requirement of substantiation, and of the circumstances of the alleged prior publications has not been discussed (thematisiert) at all within the time limit for filing an opposition. Thus the BoA is of the opinion that for the above mentioned reasons alone there is a lack of substantiation resulting in the inadmissibility of the opposition.

[17] For the sake of completeness, however, the [Board] wishes to make the following comment on the third objection of the [opponent] (see point [12] above). The [opponent] is of the opinion that the dates mentioned in the notice of opposition are to be understood as print dates, and consequently one has to assume a prior publication of documents A3 and A5, and the opposition is sufficiently substantiated. First it has to be noted that, as mentioned above, the BoA does not endorse this approach, be it only because the dates provided in the opposition form were not unambiguously to be understood as print dates. But even if one assumes that the indication “JU 1336/1, 6 720 603 928 (2.96) PC - Pf” refers to the date on which A3 was printed – as alleged by the [opponent] – this does not say anything about the date of publication, which is decisive for the determination of the prior art. The BoA is of the opinion that in this context it also has to be taken into account that document A3 provides assembly instructions. Usually assembly and installation instructions are not properly “published” but are made available to the public together with the product that is to be assembled or installed (cf. T 511/02). The corresponding information cannot be deduced from A3 itself, nor does the notice of opposition provide any indication on possible sales of the product or a distribution of the assembly instructions related to such sales.

[18] As regards A5, it has to be noted that it apparently is a company brochure of the [opponent]. It is true indeed that, as a rule, a brochure that is directed at clients may be assumed to be distributed to potential customers shortly after the print date, so that the indication of the print date may be sufficient under certain circumstances (see T 597/07 and T 782/04). However, in the present case the BoA is of the opinion that it is necessary to take account of the fact that the opposition form only contains the indication “August 1998” without any further explanation whether the opponent  understands this date to be a date of print, of publication or an editorial deadline. Moreover, there is no indication as to whether this date was derived from information contained in the document itself. This, however, appears to be required in the present case because, as mentioned above, A5 contains several letter-number combinations which might serve as a basis for dating the document. However, even if the indication “subject to change A/0898 87 6108” on the last page of A5 is used and interpreted as a date, this date cannot be readily understood to be a print date. Rather, the indication “subject to change” suggests that this was intended to establish the editorial deadline or the prior art taken into account in the brochure. The Board is of the opinion that in the present case it also has to be taken into account that the patent under consideration claims a priority date of March 14, 1999, i.e. a date which is only about 8 to 9 months after the above mentioned date (“August 1998”). If one assumes that “August 1998” designates the prior art taken into account in the brochure or the editorial deadline, then one may not simply assume that [the document] has been published before the priority date because usually there is quite some time between the editorial deadline and the printing (Drucklegung) and a subsequent publication, which itself may be quite some time before the distribution of the brochures, irrespective of the configurations mentioned by the OD, where the distribution of printed brochures does not take place at all, for technical or economic reasons (deficiency of the product, lack of compliance with technical standards, infringements, etc.). In this context the [patent proprietor] has pointed out that it is not unusual that printed brochures are not published in cases where the technology develops quickly or where there is a deficiency of the product which leads to the production of distribution of the products being stopped.

[19] The date and the circumstances of the publication are decisive for the assessment of whether the documents A3 and A5 belong to the prior art and, therefore, whether they can be cited against the patent at all. Thus a presentation of the corresponding facts would have been necessary for the justification of the ground for opposition “inventive step” in the present case. For the above mentioned reasons the BoA is of the opinion that the indications of dates contained in the opposition form, which have not been explained at all, do not comply with the requirement of substantiation expressed in R 55(c) EPC 1973, all the more so as the documents do not provide any indications helping to understand the dates given in the opposition form.

[20] In the statement of grounds of appeal the [opponent] also pointed out that it was not relevant for the admissibility whether the indications regarding the publication of the documents were proven; [the opponent expressed the opinion] that this was related to the allowability of the opposition but not to be dealt with when its admissibility was examined.

[21] In this context it has to be emphasized that it is necessary to distinguish between the requirement of substantiation and the question of whether an assertion regarding facts (Tatsachenvortrag) is considered to have been proven. When substantiation is to be examined, all that has to be examined is whether the relevant facts and evidence are indicated so that they allow the Opposition Division (OD) and the patent proprietor to correctly understand the grounds for opposition that are invoked and their validity (Stichhaltigkeit) without further investigations and whether they are enabled to comment on them (cf. T 2/89 and T 328/87 . The BoA has carried out the examination accordingly; it had to examine whether the factual assertion regarding the date and the circumstances of the publication of A3 and A5 was sufficient. There was a need for such an assertion because the documents cited are not patent documents which themselves provide a reliable publication date. The mere indication of dates without any further explanation of whether these date are publication dates at all and without any explanation regarding the basis for the dating cannot constitute a sufficient assertion of facts, all the more as the documents do not unambiguously disclose these dates. Moreover, it has to be taken into account that dates that may be contained in such documents usually refer to an editorial deadline or a print date but not the date of publication. Therefore, in view of the nature of the documents, the dates provided on the opposition form needed further explanation, which means that the factual assertions did not comply with the requirement of substantiation in this respect. Thus, what matters is not whether the dates provided were to be considered to have been proven, but only whether the submissions were sufficiently substantiated regarding the date and the circumstances of the publication of documents A3 and A5.

[22] As the requirement of substantiation has to be met within the time limit for filing an opposition and any deficiency of justification cannot be remedied after expiration of this time limit (see above, point [10]), neither the submissions of the [opponent] dated September 30, 2005, which contain further explanations regarding the publication of documents A3 and A5, nor the declaration in lieu of oath of Dr. Hocker, which has been filed during the oral proceedings before the OD, on November 15, 2010, can be taken into account when the substantiation [of the grounds for opposition] is examined. Also, the argument presented in the statement of grounds of appeal, according to which the documents A3 and A5 had only been filed in order to provide evidence for the general knowledge of the skilled person and accordingly, the attacks contained in the opposition are based on A1 in combination with the general knowledge of the skilled person, is not persuasive. When discussing the ground of inventive step, the notice of opposition expressly indicates that the skilled person, based on document A1, would consider the teaching contained in documents A3 and A5 in order to reach the subject-matter of claim 1 of the patent-in-suit […]. Thus the BoA cannot endorse the argument of the [opponent] according to which the documents A3 and A5 have only been introduced as evidence for the common technical knowledge.  

[23] As already explained by the OD in […] its decision, the objections against inventive step which have been raised in the notice of opposition expressly rely on a combination of A1 and A3 or A5, respectively. Even if it was possible to object [to inventive step] based on document A1 in combination with the general knowledge of the skilled person, as first argued by the [opponent] during the oral proceedings before the OD […] and repeated in the statement of grounds of appeal, this does not mean that such an objection, which has only been raised after expiration of the time limit for filing an opposition can remedy the original lack of substantiation of the opposition. As mentioned above, the requirement of substantiation has to be met within the time limit for filing an opposition. Subsequent attempts of remedying deficiencies are not to be taken into account when this question is examined.

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

The file wrapper can be found here.

T 2003/08 – Fading Memories

In this case the Board also had to deal with an alleged oral disclosure. This part is interesting because it shows the type of evidence gathered in witness hearings and what the Board makes of it.

Oral disclosure

Request not to hear the witnesses Dr Wallukat and Dr Kunze

[30] By an interlocutory decision in accordance with A 117 and R 117 the board decided that it was necessary to hear Dr Wallukat and Dr Kunze as witnesses.

[31] The witnesses were summoned in accordance with R 118. In accordance with the second half-sentence of R 118(2)(c) Dr Wallukat and Dr Kunze were invited to confirm within two months of receipt of the summons that they were prepared to appear before the board. Neither of the two witnesses replied, either within the given time limit or at all. Yet, both witnesses were present on the day for which they were summoned. The appellant-patentee requested the board to refrain from hearing them.

[32] The failure to react to the invitation in the summonses does not have any influence on the board’s view that the witness-evidence of Dr Wallukat and Dr Kunze was necessary in the present case and therefore is no reason for the board to change its interlocutory decision.

[33] R 120(1) indicates as the consequence of a failure to reply to the summons that “if no reply is received within the period specified in the summons, the EPO may, in accordance with A 131(2), request the competent court to hear the person concerned.” However, in the event Dr Wallukat and Dr Kunze were present on the date indicated in the summonses and the board could hear them as witnesses so that it was not necessary to take any other such step.

[34] The appellant-patentee submitted that the missing replies had put it in a disadvantageous situation because it was uncertain whether or not the witnesses would attend and because, if they did not attend, it nevertheless had to be prepared for them to attend. The board has therefore considered whether the appellant-patentee’s right to be heard was violated by the fact that, despite the missing replies, the witnesses would be heard on the date for which they were summoned.

When asked by the chairman of the board at the oral proceedings whether or not the appellant-patentee’s representative was prepared for both eventualities, i.e. for both the presence and absence of the witnesses, the appellant-patentee’s representative confirmed that he was. Also the appellant-patentee had not asked for a break for preparation or even for an adjournment of the hearing. Thus, the appellant-patentee was prepared to hear the witnesses and therefore its right to be heard would not be violated, if the witnesses were in fact heard.

[35] The appellant-patentee also submitted that the appellant-opponent had played a procedural game by withholding the information that the witnesses would attend. However, although it is often a party – here the appellant-opponent – who offers a witness, the witness is not the party itself. This is illustrated, for example, by the fact that the summons for the witness hearing can be sent to the witness directly (as in the present case) and not necessarily to the representative of the party in question. Thus, the appellant-opponent is not responsible for the actions of a witness. It is of course desirable that a party, or its representative, who wishes a witness to be heard, takes all practical steps to ensure the attendance of that witness. That does not mean however, that, if a witness does not itself comply with a request directed to it, the party or representative is indulging in “procedural games”.

[36] Therefore, the board decided to refuse the appellant-patentee’s request not to hear the witnesses. This decision was taken in the particular circumstances of the present case and should not be taken to mean that in other cases the failure to meet the time limit of R 118(c) will always remain without consequences.

Evaluation of evidence: documents E1, E2, E3 and E24;

oral testimony of Dr Wallukat and Dr Kunze

Documents E1, E2 and E3

[37] In the context of the alleged oral disclosure of the subject-matter of claim 1 by Dr Wallukat the board observes that, in contrast to a written document the contents of which are fixed and can be read again and again, an oral presentation is ephemeral. Therefore, the standard of proof for ascertaining the contents of an oral disclosure is high. What has been said, or to use the terms of A 54(2), what has been “made available to the public” has to be put beyond reasonable doubt. In the often-cited decision in case T 1212/97 [4] the board expressed the view that “written notes made at the lecture by at least two members of the audience can usually be regarded as sufficient” for that purpose.

[38] However, a fact also alluded to by the board in case T 1212/97 [4] is that the amount of evidence necessary to establish the content of an oral presentation beyond reasonable doubt is to be judged on a case to case basis, i.e. it depends on the quality of the evidence in each case. In the present board’s view decision T 1212/97 cannot therefore be interpreted as setting an absolute standard for the amount of evidence necessary to prove the contents of an oral disclosure.

[39] In the present case the Opposition Division (OD) found that the evidence available to it – documents E1, E2, E3 – did not prove beyond reasonable doubt that the subject-matter of claim 1 was made available during Dr Wallukat’s lecture.

[39.1] Document E3, an article published in a book (according to the bibliographic data on page 3 of document E3: Proceedings of the International Symposium on “The Role of Immune Mechanisms in Cardiovascular Disease”), disclosed all the features of claim 1, but was published after the priority date. There was no supplementary evidence to establish that the relevant contents of document E3 had in fact been made available to the public at the lecture. Document E24, aimed at proving that document E3 had been written shortly after the conference, was not admitted by the OD into the proceedings due to its late filing and lack of prima facie relevance. This document was re-filed in appeal proceedings and the board has – by agreement between the parties – admitted it into the proceedings […].

[39.2] Documents E1 and E2 are each a so-called “Eidesstattliche Versicherung” (i.e. a declaration made in lieu of an oath, hereinafter “declaration”), declaration E1 being that of the lecturer himself, Dr Wallukat, and declaration E2 that of a member of the audience, Dr Kunze. Neither of the two declarations was supported by contemporary notes. The OD therefore concluded that these declarations did not satisfy the criteria in decision T 1212/97 for establishing the contents of an oral disclosure beyond reasonable doubt. Further, the objectivity of the contents of declaration E2 could be questioned in view of a later professional cooperation of Dr Kunze and Dr Wallukat. Moreover, in view of the nature of the written evidence E1 and E2 the OD declined in the light of decision T 1212/97 to hear Dr Wallukat and Dr Kunze as witnesses because their oral testimony would not make good the “deficiencies” of their declarations.

[40] The board shares the OD’s view on the evidential quality of document E3. It cannot automatically be assumed that a written publication, although it appears in a book referred to as “proceedings” of a conference, identically reproduces the lectures.

[41] As the OD, but for different reasons, the board comes to the conclusion that documents E1 and E2 per se are not of a quality to put the contents of an oral disclosure beyond reasonable doubt.

First, the long lapse of time between the event to be recalled and the writing of the declarations – around 10 years – together with the absence of contemporary notes sheds prima facie doubt on the correctness of the recollection of Dr Wallukat and Dr Kunze, as does the possibility that their recollection was tainted by the contents of document E3, later publications or information gained from their subsequent professional relationship. Second, relations with the appellant-opponent’s company could possibly have influenced Dr Wallukat’s and Dr Kunze’s objectivity.

[42] As noted above […], the board is not convinced that decision T 1212/97 is the last word on the quantum of proof for prior disclosures during lectures. The board considers that there may be circumstances where evidence from the lecturer and only one member of the audience is convincing enough to reach the standard of proof - i.e. beyond reasonable doubt.

Oral testimony of Dr Wallukat and Dr Kunze

[43] The board felt that its reservations concerning declarations E1 and E2 and document E3 could possibly be dispelled by hearing the authors of declarations E1 and E2 themselves. In contrast to the OD the board therefore considered it appropriate to hear Dr Wallukat and Dr Kunze as witnesses because their testimony could affect the outcome of the proceedings.

[44] The following is a selection of statements made by Dr Wallukat and Dr Kunze during their testimonies. […]

General details about the conference

[44.1] Dr Wallukat remembered who the organizer was, that he had been invited by him, the venue and date of the conference, that many American colleagues participated, that he had seen Dr Kunze in the auditorium during his lecture and that he had not presented a poster […]. Also Dr Kunze recalled who the organizer was, the venue and date, that the conference “came quickly” – it took place six weeks after the announcement, that he had heard about it, but that he had additionally received an invitation, and that he went there for two days as evidenced from parking tickets […].

Both Dr Wallukat and Dr Kunze could not remember whether poster sessions took place during the conference […], whether Dr Wallukat’s lecture was held in the morning or in the afternoon […] and who introduced the speakers […].

The lecture

Circumstances

[44.2.1] Whereas Dr Kunze remembered that the lecture room was the great ballroom of the hotel in which the conference was held, Dr Wallukat only remembered that it was one of the bigger lecture rooms of this hotel […]. Dr Kunze remembered Dr Wallukat’s presentation, but could not remember any other presentation without recourse to document E3 […].

Both Dr Wallukat and Dr Kunze agree in their recollection that during Dr Wallukat’s presentation the room was not really full […].

Slides

[44.2.2] Dr Wallukat said that he had shown slides of all the figures disclosed in document E3 plus those in an envelope which he brought with him to the witness hearing plus possibly two or three more […].

Dr Kunze said that Dr Wallukat had shown 8 to 10 slides which were all in Dr Wallukat’s envelope […].

Contents of the lecture

[44.2.3] Dr Wallukat said that the data presented at the lecture were “brand new”. Dr Kunze said that he did not need to make notes because he knew what was said.

Dr Wallukat stated that the gist of his lecture was that he and Dr Müller had noticed that the relevant antibodies decreased in the course of the healing process in a patient with myocarditis and that at the same time the patient’s heart function improved […].

Dr Kunze said that during the lecture Dr Wallukat reported on a patient with myocarditis, by whom in the course of the healing process, the antibodies disappeared […] and that this had given him the idea to reduce antibodies in patients suffering from DCM – for which there was no cure […] and that the take-home message was: if you reduce the antibodies, then this improves the function of the heart and its anatomy […].

Patient identification

[44.2.4] Dr Kunze stated that Dr Wallukat had identified the myocarditis-patient by initials […], whereas Dr Wallukat said that he had not identified the patient by any means […].

Extent of the reduction of immunoglobulin

[44.2.5] Dr Wallukat stated that he had not disclosed during the lecture any details of the extent to which the immunglobulin portion in the patient’s blood was reduced.

Dr Kunze said that Dr Wallukat had disclosed that the level of immunoglobulins was decreased to the extent of 80%. That this was a good value had not been known at the time […].

Discussion after the lecture

[44.2.6] Dr Wallukat was not sure about the intensity of the discussion immediately after his lecture and whether the “bridge-to-transplant” issue had been discussed […]. He recalled that in later personal conversations at the symposium other participants, in particular Prof. Maisch, had expressed appreciation of the new method presented by him […].

Dr Kunze appeared not to be sure that there had been a discussion immediately after Dr Wallukat’s presentation ([…] “Frage: Aber nach den Vorträgen gibt es eine Fragerunde. Antwort: Ja, das ist dann normalerweise die Podiumsrunde ...”), but he remembered that he participated as listener at the “Podiumsrunde” where the participants expressed surprise about the new treatment […]. Dr Kunze also said that the “bridge-to-tranplant” issue had been mentioned at the “Podiumsrunde” (war “auf dem Podium”) […].

Collaboration between Dr Wallukat and Dr Kunze before the lecture

[44.3] Dr Wallukat said that he had not worked directly with Dr Kunze on aspects of DCM in the days, weeks or months preceding the presentation and that Dr Kunze had not been involved in the studies that led to the data presented at the presentation […]. They only cooperated later in the context of the firm “Affina” where they tried to develop new adsorbers, also with the aim of using them for the treatment of DCM […].

Dr Kunze said that he had often had discussions with Dr Wallukat about DCM or immunoaphereses before his presentation […] and that he himself, Dr Wallukat and Dr Müller had together determined the regimen to reduce the level of immunoglobulins by 80% […]. Dr Kunze said that after the presentation the collaboration was intensified. He said that he and Dr Wallukat developed new adsorbers in the context of the firm “Affina” which had been founded in 1999 […].

Declarations E1 and E2

[44.4] Dr Wallukat and Dr Kunze both stated that they had written the declarations themselves […], but neither of them spontaneously recalled when exactly this happened […].

Dr Wallukat said that he had not used anything to refresh his memory when he wrote the declaration. Dr Kunze said that he had used document E3 and his memory; moreover, he knew the publications of Dr Wallukat and Dr Borda and he could of course not at the time of his oral testimony distinguish precisely between what he knew in 1995 and the knowledge he had acquired later […].

Conformity of the contents of document E3 with those of the lecture

[44.5] Dr Wallukat and Dr Kunze both remembered that Figure 3 of document E3 had been shown as a slide at the lecture.

Dr Wallukat could not remember whether he had shown a slide with the data of Table 1 of document E3 […] whereas Dr Kunze said that such a slide had been presented […].

Dr Wallukat remembered that he had said more during the lecture than what was disclosed in document E3, in particular that he had shown slides with data of patients treated at the “Charité” hospital […]. Dr Kunze said that the contents of document E3 were an accurate reproduction of what Dr Wallukat had said […] and that the only point that was additionally mentioned in the lecture was how to measure the antibodies […].

Relationship to the appellant-opponent

[…] Dr Kunze said that he had been working for the last five years as medical advisor for the appellant-opponent’s company […] and Dr Wallukat said that he never had any relations with this company […].

[45] The board appreciates that both witnesses were honest and open in their testimony and appeared genuinely to be trying to assist the board. The board draws the following conclusions after hearing the oral testimony:

• It appears that any relation of Dr Wallukat and Dr Kunze to the appellant-opponent at the time of writing the declarations, i.e. the party in whose support the declarations were made, can be excluded, so that any influence on their evidence for that reason can be eliminated.

• It is accepted that attention plays a key role in storing information in the human brain. This is why, for example, emotionally charged events are better and longer remembered. The board did however not gain the impression that the lecture was perceived by Dr Wallukat as an outstanding and therefore easily memorisable event. For example, Dr Wallukat could not remember the lecture room, or the time of the day when he gave the lecture.

• Both Dr Wallukat and Dr Kunze do not have a recollection of all details of the conference and the lecture. It would in fact be surprising if they had – human memory fades with the passage of time. In many aspects the witnesses have recollections, but they are diverging – the extent of their collaboration in the period before and shortly after the lecture, the information that was disclosed (or not) during the lecture and the identity of the contents of the lecture and document E3 are particularly noteworthy. The board cannot exclude that the divergence in recollection is due to mixing up knowledge from the lecture and knowledge gained from later collaboration and joint publications. In other aspects Dr Wallukat’s and Dr Kunze’s recollection is uniform, in particular about Dr Wallukat’s disclosure at the lecture that patients with DCM had been treated by immunoapheresis. The board is not sure whether the recollection of details falling in this category is spontaneous, i.e. whether it has been made independently of written information, such as for example the declarations or document E3.

[46] In toto, the oral testimony of Dr Wallukat and Dr Kunze could not dispel the board’s doubts that, during Dr Wallukat’s presentation, what is stated in declarations E1 and E2 as having been said was in fact actually said, that a slide with the contents of Figure 3 of document E3 was actually shown, or even that the complete contents of document E3 were actually disclosed.

Document E24

[47] As to the post-published document E3 as evidence of what was said during Dr Wallukat’s lecture, document E24 does not add anything to prove how much of the contents of document E3 was made available at the lecture. Document E24 appears to be a standard letter sent to all speakers at the conference (otherwise the writers would not have expressed the hope that Dr Wallukat, who lives in Berlin as they must have known, had “einen angenehmen Aufenthalt in Berlin”).

Document E24 does not contain anything from which it could be concluded that the document had to be an accurate reproduction of the lecture. The indication of the maximum amount of pages and figures suggests that shortening may be necessary, but it does not indicate that nothing of relevance can be added.

[48] Taking together all the evidence before it, the board is not in a position to conclude that it has been established beyond reasonable doubt that Dr Wallukat disclosed during his lecture subject-matter falling within claim 1. Hence, the novelty-objection based on the oral disclosure fails for this reason.

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T 480/11 – Not Just An Expert

In this revocation appeal case, the patent proprietor – in the course of the oral proceedings (OPs) – requested the Board to hear an expert.

[4.1] Claim 1 of new auxiliary request 2 differs from the claim 1 of auxiliary request 1 in that the cell is now restricted to the species Lactococcus lactis […].

[4.2] During the discussion of the admissibility of new auxiliary request 2, the [patent proprietor] requested that Mr Johansen be allowed to speak about “their experience of repeating the claimed invention with other strains of Lactococcus lactis and their observed success rate in providing Lactococcus strains fulfilling the requirements of claim 1 of the newly presented auxiliary request 2”.

[4.3] The board is aware that the [patent proprietor] referred to Mr Johansen as a technical expert in its letter of 13 June 2013 and requested that Mr Johansen be allowed to provide comments on any technical issue relating to the claimed invention that might come up during the hearing. However, the subject on which Mr Johansen intended to speak according to the [patent proprietor’s] request as specified during the OPs was not simply a technical issue but in fact an event in the past, namely the performance of experiments and the results obtained thereby, which had taken place at the [patent proprietor’s] laboratory. So the [patent proprietor’s] request was actually directed to hearing Mr Johansen as a witness rather than as a technical expert.

[4.4] The [patent proprietor] argued that the proprietor had made a statement during the opposition proceedings similar to the one which Mr Johansen was going to present in appeal. The [patent proprietor] referred to the passage of the Opposition Division’s decision in the second part of the fifth paragraph on page 8 of the decision, which reads as follows

“... P argued that the majority of the strain produced by Chr. Hansen and tested in the laboratory produced cytochrome d, and although some trial and error might be necessary to select the suitable strains, no undue burden was left to the skilled person as the results obtained – with producing and non-producing strains – were repeatable.”

The proprietor’s statement referred to in the OD’s decision that the majority of strains produce cytochrome d had been challenged by the [opponent] in its response to the statement of grounds of appeal (letter of 9 September 2011). In this letter the [opponent] had specifically stated that “[H]owever, none of the other strains/species tested produced cytochrome d. Notably, even the other strain of Lactococcus lactis tested, namely strain HP, did NOT produce cytochrome d.”

So at the latest upon receipt of this letter, the [patent proprietor] must have been aware that its statement during the opposition proceedings may not be sufficient to prove that the majority of strains lead to the required cytochrome d amount, and that thus more evidence would be required as regards the success rate obtained with these strains. Nevertheless, the [patent proprietor] chose to wait until the latest possible point in time during the present appeal proceedings to offer further evidence in the form of a “witness statement”.

If the witness had been allowed to speak, the [opponent] would have had to be given sufficient opportunity to challenge the witness statement and it would have been necessary to adjourn the OPs. Therefore, the board decided not to allow the [patent proprietor’s] request to hear Mr Johansen, pursuant to Article 13(3) RPBA.

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T 2003/08 – A Call For Witnesses

I found this decision noteworthy because it is the first time I see an interlocutory decision on taking of evidence.

Both the patent proprietor and the opponent had filed an appeal against the maintenance of the opposed patent, which is directed at the treatment of dilated cardiomyopathy by removal of autoantibodies.

[1] Document E1 in the present proceedings is a so-called “Eidesstattliche Versicherung” by Dr W. dated 10 February 2005. Document E2 is an “Eidesstattliche Versicherung” by Dr K. dated 9 February 2005.

[2] Dr W. inter alia states in document E1 that he attended a public symposium on “The role of immune mechanisms in cardiovascular disease” from 14 to 16 December 1995 in Berlin and that he gave on 15 September 1995 on the occasion of the symposium a presentation with the title “The possible pathogenic role of autoantibodies in myocarditis and dilated cardiomyopathy”.

[3] As to the contents of his presentation Dr W. declares the following in paragraphs 3 to 5 of document E1.

*** my translation of the German original ***

“In my oral presentation on September 15, 1995, I presented, inter alia, slides showing the results obtained in my research group at the Max-Delbrück Centrum related to the identification and characterisation of autoantibodies against the β1 adrenergic receptor of patients suffering from dilated cardiomyopathy, which had been purified by means of affinity chromatography. For this purpose I used peptides corresponding to the structures of the receptor that connect with the antibodies.

Moreover, I have presented data regarding the extracorporeal removal of immunoglobulins or autoantibodies against the β1 adrenergic receptor, respectively, from the body or the blood plasma of patients suffering from dilated cardiomyopathy, by means of immune apheresis. In this [method] the blood plasma that is separated from cells is led to columns containing ligands that specifically connect to the immunoglobulins of human plasma and thereby retain it. The plasma purified by removal of the immunoglobulins is then intravenously re-administered to the patient.

The immune adsorption decreases the levels of β1 adrenergic antibodies in a statistically significant and partly long-lasting manner. Directly after the immune adsorption a immunoglobulins preparation is intravenously administered to the patient in order to compensate the deficiency caused by the adsorption. After the immune adsorption the heart function of patients suffering from dilated cardiomyopathy is improved. I have shown this by means of several slides one of which is reproduced as an example in figure 3 of my above mentioned publication.”

*** end of the translation ***

[4] Dr K. inter alia states in document E2 that Dr W. gave (“hielt”) a presentation with the title “The possible pathogenic role of autoantibodies in myocarditis and dilated cardiomyopathy”. He furthermore indicates some of the topics presented by Dr W. […] in paragraphs 3 to 5 of document E2:

*** my translation of the German original ***

“… and presented the results obtained in his research group at the Max-Delbück Centrum regarding the pathogenetic significance of autoantibodies in cases of myocarditis and dilated cardiomyopathy as well as [results] regarding the treatment of dilated cardiomyopathy by means of extracorporeal removal of immunoglobulins by means of immune adsorption from the blood plasma of patients. In this [method] blodd plasma is led to columns containing ligands for human immunoglobulin which are coupled to the column and which are specific for immunoglobulins. This method is commonly referred to as immune apheresis or therapeutic apheresis. The plasma that has been mostly and significantly purified from the immunoglobulin is then intravenously re-administered to the patient.

In this context Dr W. presented the therapeutic effectiveness of extracorporeal removal of anti β1 adrenergic receptor autoantibodies from the blood of patients suffering from dilated cardiomyopathy. He was able to show that after the blood plasma of patients had passed through a column specifically binding immunoglobulin, containing ligands that are appropriate for binding human immunoglobulin, the content of autoantibodies against the dilated β1 adrenergic receptor in the blood plasma was significantly reduced both immediately and also several weeks later. The immunoglobulin reduction in the blood plasma was greater than 80% after the immune adsorption. The pathogen β1 receptor autoantibody was eliminated, too. Immediately after the immune apheresis immunoglobulin preparations were intravenously administered to the patient in order to restore humoral immune competence. After the therapeutic apheresis the heart function of the patients improved.

The sustained decrease of the β1 adrenergic autoantibody and the improved heart function several weeks after the immune apheresis were shown in a slide that is reproduced in figure 3 of Dr W’s article in the above mentioned book.”

*** end of the translation ***

[5] Evidence shall be taken on whether or not the information recited in paragraphs [3] and [4] above was made publicly available during Dr W.’s presentation in order to establish whether or not it is prior art pursuant to A 54 by hearing of the witnesses Dr Gerd W. […] and Dr Rudolf K. […]

The witnesses are asked to also bring any documentary material that could be relevant with regard to the issue on which they will be heard.

[6] The taking of evidence will be made on the first day, i.e. on 20 September 2012, of the oral proceedings summoned to take place on 20 and 21 September 2012 […].

[7] Pursuant to R 122(2) witnesses who are summoned by and appear before the EPO shall be entitled to appropriate reimbursement of expenses for travel and subsistence.

[8] In accordance with R 122(1) the board makes the taking of evidence conditional upon appellant II making a deposit of an advance payment of Euro 4300,00 for each of the witnesses to be heard (i.e. in toto Euro 8600,00) to secure payment of the costs arising from any possible reimbursement.

[9] Instead of making a deposit of an advance payment it is also possible to file a waiver of costs signed by each witness.

[10] The deposit or the waiver should be made or filed, respectively, within one month from notification of this decision.

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T 1797/09 – Obliquity

This is an appeal of the opponent against the maintenance of the opposed patent in amended form. It contains an interesting discussion with respect to the use of an A 54(3) document.

Claim 1 of the main request before the Board read:

1. A machine dish wash composition which is in the form of a tablet comprising

a) a hydrophobically modified polycarboxylic acid

b) an organic phosphonate and

c) a polymer of acrylic acid.

The Board found this claim to be novel over D1, which was prior art under A 54(3). It nevertheless used this document in the context of the inventive step assessment.

[2.1] According to the patent in suit the technical problem to be solved consists in the provision of a dish wash composition which obviates the need for salt or rinse aid in the machine dishwashing process […].

As a solution to this technical problem, claim 1 of the main requests suggests a dish wash composition in the form of a tablet comprising a) a hydrophobically modified polycarboxylic acid, b) an organic phosphonate and c) a polymer of acrylic acid.

It is emphasised that the claimed compositions are particularly effective at antiscaling and antispotting in the machine dish wash process […].

[2.2] Document D1 is the only document cited by the [opponent] relating to the same technical problem as the patent in suit. However, as it is a document according to A 54(3), it does not constitute prior art relevant as a starting point for the assessment of inventive step (A 56).

The Opposition Division (OD) has selected the comparative example of document D3 which comprises Acusol 460 ND as the closest prior art for the reason that it had the most technical features in common with the opposed patent. The Board agrees with the OD and the presentation of both parties during appeal proceedings that this example is a suitable starting point for the assessment of inventive step.

[2.3] Document D3 relates to a machine dish wash detergent or rinse aid formulation which deliver excellent final glassware appearance as evidenced by reduced spotting and filming […]. This effect is obtained by providing a dish wash detergent or rinse aid composition comprising a particular nitrogen containing cationic or amphoteric polymer […].

The superior performance of dish wash detergent formulations containing these polymers with regard to spotting is shown by comparison with formulations containing prior art polymers, inter alia Acusol 460 ND […], which is a hydrophobically modified polycarboxylic acid according to Claim 1 of the present main request.

Test 1 of Table 2 is the only one where the polymers are dosed via the dispenser cup together with a base formulation, namely Product 1 of Table 1 […]. The latter contains a polymer of acrylic acid.

Hence, document D3 discloses as a comparative example a machine dish wash composition comprising a hydrophobically modified polycarboxylic acid and a polymer of acrylic acid, i.e. components a) and c) of present Claim 1.

[2.4] This composition differs from the claimed one only in that it is not in the form of a tablet and does not contain an organic phosphonate (component b) of Claim 1).

[2.5] There is no evidence on file to illustrate that the technical problem mentioned in the patent of obviating the need for salt or rinse aid in the dish washing process, actually has been solved by these distinguishing features.

[2.6] The [patent proprietors] argued, that in the present case, where the technical problem underlying the invention was completely new at the priority date of the patent, it was not necessary to provide evidence to make credible that the technical problem was actually solved. They relied in this respect on decision T 692/09. Given these circumstances, it was prima facie plausible that in view of the comparative example in document D3 the above technical problem was solved by the addition of an organic phosphonate (component b)).

Concerning the tablet form of the composition, the [patent proprietors] eventually agreed that there was no pointer in the patent towards a contribution of this feature to the solution of the technical problem.

[2.7] The Board agrees with the [patent proprietors] insofar as a technical problem set out in a patent is considered to be credibly solved by a claimed invention if there exist no reasons to assume the contrary. In such circumstances, it is normally the opponent’s burden to prove the opposite or at least provide evidence casting doubt on the alleged solution of the problem. If no such evidence is provided, the benefit of doubt is given to the patent proprietor. However, if the opponent succeeds to cast reasonable doubt on the alleged effect, the burden to proof its allegations is shifted to the patent proprietor (Case Law of the Boards of Appeal, 6th edition 2010, chapter VI.H.5.).

In the case underlying T 692/09 no such evidence was forwarded by the opponent.

In the present case, however, the opponent has pointed to the comparative examples of document D1 where it is shown that the antispotting and antiscaling performance of a dish wash composition containing components a), b) and c) (Example 12) is worse than one containing only components a) and c) (Example 10).

[2.8] The [patent proprietors] argued that document D1 has to be disregarded as a whole since it is not prior art under A 56 to be considered for the purpose of inventive step.

[2.9] The Board agrees with the [patent proprietors] that a piece of the prior art which has not been made available to the public at the priority date of the opposed patent cannot be used directly as evidence for the assessment of inventive step.

However, in the present case document D1 is not considered as direct evidence of the existing prior art but only as evidence used indirectly for a conclusion which may be questioned as to its plausibility. Such a document which is not itself part of the prior art does not stand and fall with its publication date even on the issue of inventive step (Case Law of the Boards of Appeal, 6th edition 2010, chapter VI.H.4.1 and decision T 1110/03).

The comparative examples in document D1 are in the Board’s opinion equivalent with comparative examples put forward by a party to furnish proof of what it alleges. Such examples are allowable at any reasonable point of the proceedings, provided they are not in abuse of the proceedings.

Hence, the comparative examples of document D1 could have been reworked by the [opponent] to illustrate exactly what they actually show in document D1. In fact, the [opponent] has reworked some of the examples of document D1 (Examples 7, 9 and 12) and obtained the same qualitative results, namely that compositions containing components a), b) and c) are as insufficient at antiscaling and antispotting as are compositions containing only component a).

The Board further notes that those examples of document D1 which illustrate compositions in accordance with comparative Example 1 of document D3 (Example 10) and composition according to Claim 1 (Example 12) differ from each other not only in that the latter also comprises an organic phosphonate but also in that different brands of acrylic acid polymers have been used. Hence, the antiscaling and antispotting performance may also depend on the particular acrylic acid polymer, a factor not contemplated in the patent in suit.

[2.10] As a consequence, the comparative examples in document D1 as well as the [patent proprietors]’ comparative data cast doubt on the allegation in the patent in suit that the incorporation of an organic phosphonate into the composition according to the comparative example of document D3 would solve the technical problem of obviating the need for salt or rinse aid addition in the dishwashing process.

Since the [patent proprietors] have not invalidated that doubt, the technical problem credibly solved by the claimed subject-matter in view of the comparative example of document D3 boils down to the provision of an alternative machine dish wash composition.

[2.11] The means proposed in Claim 1 to solve this problem consists in the addition of an organic phosphonate and in that the composition is presented in tablet form.

These measures are, however, disclosed in document D3 as optional in the art of dish wash compositions […].

[2.12] The Board, therefore, concludes that starting from the comparative example of document D3 it was obvious for a skilled person, faced with the technical problem of providing an alternative dish wash composition, to add an organic phosphonate and to present the composition in the form of tablets.

The patent was finally revoked.

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T 535/08 – No Contribution

As most readers of this blog will be aware of, G 1/93 made the following statement:

A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature.

A closer inspection of G 1/93 shows that the Board had disclaimers in mind when drafting this headnote, but for some reasons unknown to me, the word “disclaimer” is mentioned only once in the decision (point [7], citing an argument of the patent proprietor). As it stands, the headnote could also refer to “features that do not provide a technical contribution” other than a disclaimer, and it has indeed often been understood in this way.

The present decision is interesting in this respect.

Claim 1 of the patent as granted read:

A friction lining mixture for brake and clutch linings co-operating with a friction partner, composed of metals that may be present in fibrous and powdery form, fillers, lubricants, binders and organic components, characterized in that the friction lining mixture contains, as a solid lubricant additive, at least one metal sulphide of the formula

wherein M1, M2 and M3 are different from each other and each represent one metal of the series Ti, V, Mn, Fe, Cu, Zn, MO, W, Sb, Sn and Bi, S denotes sulphur, and the subscripts comprise the ranges of I = 1-5, m = 1-5, n = 0-5 and X = 2-8.

The appeal under consideration was filed by the opponent after the Opposition Division had maintained the patent in amended form.

Claim 1 of the main request filed during oral proceedings (OPs) before the Board read

Use of a solid lubricant additive containing at least one metal sulphide of the formula

as solid lubricant, wherein M1, M2 and M3 are different from each other and each represent one metal of the series Ti, V, Mn, Fe, Cu, Zn, MO, W, Sb, Sn and Bi, S denotes sulphur, and the subscripts comprise the ranges of I = 1-5, m = 1-5, n = 0-5 and X = 2-8, in a friction lining mixture for brake and clutch linings co-operating with a friction partner, composed of metals that may be present in fibrous and powdery form, fillers, lubricants, binders and organic components.

The Board first dismissed several objections under A 100(c) and then went on to say:

*** Translation of the German original ***

[3.1.3] As rightly pointed out by the [opponent], the feature “composed of metals … fillers, lubricants, binders and organic components” was not disclosed in the original version of the application. However, it was disputed whether the corresponding amendment made the maintenance of the patent impossible or whether it was allowable in application of decision G 1/93.

In this decision the Enlarged Board came to the following conclusion:

“A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature.

In the present case the feature was introduced into the claims during the examining proceedings. It is also undisputed that it limits the scope of protection conferred by the patent as granted. The feature could be found allowable only if it does not provide any technical contribution to the subject-matter of the claimed invention.

The [opponent] was of the opinion that the feature was essential for the invention (erfindungswesentlich), that it did delimit the subject-matter of the claims with respect to the state of the art and that, as a consequence, it did provide a technical contribution […].

This is to be approved insofar as this feature, when it was introduced within the framework of the examining proceedings, was indeed intended to delimit the subject-matter of the claim with respect to the state of the art. However, as will be explained in point [7] below [wherein the Board demonstrates the novelty of claim 1], this does not hold true for the use claims any more […]. As correctly stated in the impugned decision, the technical focus is on the use of the sulphides as solid lubricant additive in friction lining mixtures. This additive is intended to reduce wear and the dependence of friction on temperature and pressure […]. This intended contribution to the effect of the friction linings is to a large extent independent of the other components of the friction lining mixture. Therefore, the definition of the other components of the mixture does not provide any technical contribution to the claimed invention but merely delimits the subject-matter of the claims.

As a consequence, in agreement with decision G 1/93, there is no reason why the insertion of this definition into present claim 1 would make the maintenance of the patent impossible. […]

The decision also deals with an objection against the validity of the priority claim, which was decisive for deciding whether document D14 could be cited against the patent:

[6.1] The European patent application D14 was filed on October 14, 1996, claiming a priority of October 16, 1995. Therefore, its priority date lies between the priority date (May 17, 1995) and the day of filing (April 12, 1996) of the impugned patent. Therefore, the application D14 can only be prior art under A 54(3) if

• the priority of D14 is valid, and
• the priority of the impugned patent is not.