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.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 71/09 – Colours Of The Vine

The present decision reminds us that whenever an opponent invokes its own prior public use, the applicable standard of proof is very strict.

*** Translation of the French original ***

[5] The [opponent] has invoked a prior public use that is said to destroy both the novelty of and the inventive step involved in the claimed subject-matter. This prior use belongs to its own activities because the underlying facts concern the sale of the “Weinlaub 6-89” product by the [opponent].

[5.1] According to the established case law of the Boards of appeal, a finding that a use forms part of the state of the art for the purpose of A 54(2) should only be made if the available evidence, when subjected to a strict and careful evaluation, allows to establish that it has occurred (T 750/94 [4]). Consequently, before it can be asserted that a use is part of the state of the art, the Board has to ascertain that the evidence on file allows to establish with a degree of certainty that is close to absolute conviction – or, in other words, beyond all reasonable doubt – that this prior use has indeed occurred before the priority date of the impugned patent (T 97/94 [5.1]).

[5.2] The alleged prior use consists in the marketing of the “Weinlaub 6-89” product before the priority date of the patent-in-suit. This product is found in a catalogue dated May 1996 (page 8 of document V1). The product bears the reference 46364 and is not associated to a production batch (lot de fabrication).

[5.3] The [opponent] asserts that the product proposed in the catalogue corresponds to the production batch of October 26, 1995, which is mentioned in document V3 dated November 2, 1995.

This document provides details on a series of compounds of the “Igora Soft line extension” product line, which includes the product “Weinlaub” of nuance 6-89 the composition of which is referred to by number 99185 and its cream formulation by number 75855. According to this document, the product contains a blend of powders of colour AB as well as a blend of powder of colour C, both of which are simply identified by the same number 11008. Consequently, even considering that the production batch disclosed in document V3 has indeed been proposed for sale by means of catalogue V1, document V3 alone does not establish which are the oxidation colorants present in the product “Weinlaub” of nuance 6-89 because the colorants used for the preparation of the product are codified, i.e. via a colour blend 99185 or by a blend of powders of colour AB and C.

The [opponent] refers to a production batch of coloured powder bearing the number 199185 and dated November 10, 1995 (document V5). 

This blend of coloured powder has been produced after the “Weinlaub 6-89” product according to document V3 had been manufactured (2 November 1995). Thus the colour blend of document V5 could not have been used for the preparation of the production batch of the “Weinlaub 6-89” product according to document V3. Document V4 concerns a production batch of the product “Igora Soft 6-89” dated February 5, 1998, which is later than the catalogue V1 dated May 1996. As a consequence, it cannot establish the composition of the product “Weinlaub” of nuance 6-89 as proposed in the catalogue of May 1996.

The [opponent] has tried to support the public prior use by asserting that all the compositions of the blends of colours referred to by the same number are identical and that, therefore, a composition identical to the one disclosed in document V5 had been used for the manufacture of the “Weinlaub 6-89” product.

According to the established case law of the Boards of appeal of the EPO, each party to the proceedings bears the burden of proof for the facts it asserts; if a fact that is relevant to the decision is not proven, the decision is taken to the detriment of the party that was not able to administer the proof incumbent on it. In the present case the [opponent], who alone is in possession of the evidence, asserts, without providing any evidence whatsoever, that the “Weinlaub” product of nuance 6-89 referred to in catalogue V1 is the same than the one obtained in the production batch of document V3 dated November 2, 1995, and that all the recipes for the coloured power numbered 99185 have the same composition, irrespective of their manufacturing date.

Moreover, document P9 – which consists of copies of packages of products of the “Igora Royal” product line – shows that the products marketed as the same nuance may have differing colorant compositions. For instance, products 1 and 2 have not the same colorant composition although they are both referred to as “Igora Royal of nuance 4-68”. As a matter of fact, the composition of product 1 comprises o-aminophenol, HC red 3, and 4-amino 3-nitrophenol, whereas product 2 does not. Conversely, 4-amino-2-hydroxytoluene is only found in product 2.

Consequently, the Board considers that the documents filed by the [opponent] are not sufficient for establishing beyond all reasonable doubt that the composition of the product “Weinlaub” of nuance 6-89 referred to in the catalogue dated May 1996 is the same as the one disclosed in documents V4 and V5.

Thus the composition of the product “Weinlaub” of nuance 6-89 has not been established. Consequently, the alleged prior use has not been sufficiently proven and cannot be part of the state of the art (A 54(2)).

Under these circumstances, it is not necessary to answer the question on which the parties did not agree, i.e. whether the mere fact that this product was referred to in a catalogue, without there being any proof for a sale, is equivalent to making the composition of the product available to the public.

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

The file wrapper can be found here.

T 2454/11 – Postal Duties

This is an appeal against the decision of the Opposition Division to reject the opposition against the patent under consideration.

The decision was sent on June 27, 2011, which means that the time limit for filing an appeal expired on September 7, 2011.

On the very next day, the opponent informed the EPO that its representative had found through online file inspection that the appeal was absent from the Register although it had been sent on August 23.

The opponent argued that the appeal must have reached the EPO. In the private practice of the representative, letters to the EPO were collected each day, prepared for posting and then handed over to UPS at 4 o’clock. This had also happened on August 22 when the appeal under consideration as well as two further letters, all in the same envelope, were given to UPS. The other two letters appeared in the Register.

The opponent also filed a request for re-establishment, by way of precaution.

Here is what the Board had to say:

*** Translation of the German original ***

[2.1] It is the appellant that is responsible for the receipt of the notice of appeal. It carries the burden of proof [for the assertion] that the submission has actually been filed. Otherwise the Office would have to prove that it has not received a document. The EPO cannot be expected to provide such proof because it is difficult to prove that something has not happened. For the very same reason, it is the EPO that has to prove that its letters have reached the addressees when they assert that they have not received them.

[2.2] The Office ensures proof of receipt by having its letters that define time limits sent as registered letters with advice of delivery. It is the Office that bears the consequences of deficiencies that are relevant for proof, as far as dispatch and transmission of a document are concerned. In contrast to the EPO, the party sending something to the EPO has several additional options regarding the way in which the item is sent, which facilitates the proof of receipt.

[2.3] This holds true for both material and immaterial transmission of documents.

When material transmission is envisaged, it is possible to use the traditional postal transmission of a document by means of registered letter with advice of delivery and/or the addition of a notice of receipt that is to be returned. Moreover, the sender can choose delivery by hand and thereby obtain confirmation of receipt by the mailroom (Poststelle) of the Office.

A document may also be transmitted in immaterial form, electronically, by fax or e-mail, which is much more simple, sure and fast. When doing so, the sender receives an electronic or automatically printed notice of receipt. He can file them and use them as evidence if need be. These transmission techniques are nowadays the most common ways of transmitting documents to the EPO.

Shortly after a notice of appeal has been received at the EPO, the sender normally receives a confirmation of the competent registrar (Geschäftsstelle) as well as the reference number. This allows him to see that the appeal has been received, although [the confirmation] does not have to occur within the legal time limit. He can also obtain the same information, again possibly after expiration of the time limit, by electronic file inspection, as in the present case.

[2.4] The great number of – in principle equivalent – options regarding the transmission of documents to the EPO does not change the sender’s duty to be capable of proving the receipt of his letter. The fact that a document was lost or may have been lost at the EPO as a consequence of carelessness of its agents does not alter this assessment. In view of this [the sender] has to choose the way of transmission that is least problematic if something goes wrong (im Ernstfall). If he chooses a way of transmission for which proof of receipt is difficult, he has to bear the consequences. This is particularly true in the case of appealing opponents because they are excluded from remedy by means of re-establishment into the time limit for filing an appeal under A 122 (see point [4] below) when the time limit was missed and they fail to provide proof of receipt because of a clerical oversight (Büroversehen).

[2.5] Contrary to the opinion of the appellant, and contrary to Board of appeal decision T 1200/01, the strict rule that it is the party that has sent a letter to the EPO that has to bear the burden of proof is not attenuated according to the balance of probabilities of receipt. Such a standard of proof would seriously affect legal security and would lead to a softening of the due legal clarity in formal proceedings such as those before the EPO. As a matter of fact, the indefinite legal concept of probability, which would have to be interpreted when a dispute arises, and the judicial assessment (gerichtliche Abwägung) of whether the delivery is more or less likely, would lead to multifaceted casuistry where contradictions cannot be excluded. This goes against the need for transparent and clear proceedings, and is to be avoided in the interest of third parties involved in the proceedings and of the public.

[2.6] As a consequence, the decision on the receipt of a document cannot be based on a high probability of delivery. Rather, the sender has to provide proof for the receipt to the satisfaction of the Board.

[2.7] Even if – contrary to the opinion of the Board, and although there is no real need to decide on that matter – a high probability of receipt of the notice of appeal was sufficient, it may be questioned whether the appeal was filed in due time. This is because the explanations of the appellant, according to which an envelope containing the notice of appeal and two further documents as well as a list of the three documents (document D1), which was deemed to be an acknowledgement of receipt, was handed over to the UPS courier on August 22, 2011, and delivered to the EPO on the day after, do not dispel corresponding doubts in a way that would allow to consider that receipt in due time was highly probable.

The Board considers the explanations of the representative of the appellant and the declarations in lieu of oath on behalf of the secretaries (cf. documents D6 and D7) to be credible, but it does not find them suitable for establishing that the receipt of the notice of appeal was highly probable. It may well be that the secretary has put the notice of appeal into the envelope and that the document was lost at the Office subsequently. However, the declarations in lieu of oath filed by the appellant allow to imagine other not unlikely courses of events, such as the possibility that because of an oversight the notice of appeal was not put into the UPS envelope. Indeed, the secretary in charge of the dispatch declares in document D7:

“I have prepared the documents to be sent to the EPO on August 22, 2011, as I do every day. … I am not aware that I could, because of an oversight, have omitted to put any document referred to in the transmission logbook (Übermittlungsbuch) into the parcel to be sent to the EPO.”

This declaration also allows the converse assumption. The statement “I am not aware” leaves open whether the document was actually sent. The Board considers this to be explicable because the facts under consideration occurred more than eleven weeks before the statement was made. According to the common experience of life, an assistant who sends several mail items (Poststücke) every day may not be expected to recall exactly how all items were sent.

Moreover, neither the three documents nor D1 contain any hint for the mailroom that it should confirm receipt. Also, the appellant itself admits that document D1, which lists the individual documents contained in the UPS envelope, was neither postmarked by the EPO nor sent back to the representative’s law firm. Finally, D1 does not appear in any of the electronic files to which those documents belong, so that it is questionable whether this document was received. Assuming that high probability was indeed the correct standard of proof, all these circumstances give rise to doubts as to whether the notice of appeal was indeed delivered on August 23, 2011, such that one can hardly conclude that the receipt was highly probable.

Incidentally, the Board wishes to point out that the return of document D1 as acknowledgement of receipt, which was expected by the representative of the appellant, appears not to have been monitored. There were indeed more than two weeks between the receipt of the envelope on August 23, 2011, and the day on which the time limit for filing an appeal expired.

Request for re-establishment into the time limit for filing an appeal

[3] An opponent is not entitled to have its rights re-established when it misses the time limit for filing an appeal under A 108, 1^st sentence (cf. G 1/86).

Thus the request for re-establishment into the time limit for filing an appeal is inadmissible.

Filing of the appeal

As the notice of appeal has not been received in due time and as the request for re-establishment cannot be granted, the appeal is deemed not to have been filed, A 108, first sentence.

According to the case law of the Boards of appeal, the appeal fee is to be reimbursed when the appeal is deemed not to have been filed, see J 21/80 [4].

Request for reimbursement of the fee for re-establishment

Pursuant to R 136(1), second sentence, a request for re‑establishment shall be filed in writing within two months of the removal of the cause of non‑compliance (in the present case: September 8, 2011). It follows that the request for re-establishment filed on November 8, 2011, together with the fee for re-establishment, has been filed in due time.

In view of G 1/86, older decisions of the Boards of appeal of the EPO have considered a request for re-establishment filed by an appealing opponent to be “void” (gegenstandslos) or “legally ineffective” (nicht rechtswirksam gestellt) and have ordered reimbursement of the fee for re-establishment, see e.g. T 520/89 [2-3] or T 266/97 [4].

In more recent decision T 1026/06 the Board made the following statement on this issue:

“The fee for re-establishment cannot be reimbursed. The reimbursement of a fee is only possible when the fee has been paid without there being a cause in law (Rechtsgrund) or when the situation is such that the law requires reimbursement. Pursuant to A 122(3) [EPC 1973; now R 136(1), third sentence] a request for re-establishment of rights shall not be deemed to have been filed until the fee for re-establishment has been paid. Therefore, the payment of the fee is required in order to make the request effective. Thus there was a cause in law for the payment and there is no situation where the law requires reimbursement.”

The Board endorses this opinion and adopts it as its own. Thus the request for reimbursement of the fee for re-establishment has to be dismissed.

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

The file wrapper can be found here.

T 990/09 – In The Archives

This is an appeal againt the decision of the OD to revoke the opposed patent.

In what follows, the Board deals with the novelty of the main request on file.

The passage is insteresting because of the way in which the Board deals with Internet archive documents.

[6] Claim 1 is directed to a protein-free and serum-free medium for the cultivation of mammalian cells. The medium comprises an ultrafiltered soy hydrolysate, at least 40% of which has a molecular weight less than or equal to 500 daltons […]. As no endotoxin content is specified regarding the soy hydrolysate in claim 1, said technical feature is to be ignored for the novelty assessment.

[7] The [opponents] have argued that such a medium was described in document E4 and that, consequently, claim 1 was not novel. Document E4 which benefits from a priority date (25 September 2000) that is prior to the filing date claimed for the patent at issue (27 September 2000) is cited under the provisions of A 54(3) EPC.

[8] The priority document of the patent at issue fails to describe a medium comprising an ultrafiltered soy hydrolysate, at least 40% of which has a molecular weight less then or equal to 500 daltons. Indeed, only hydrolysates, at least 40% of which have a molecular weight from 200 to 500 daltons are described […]. Moreover, according to the priority document it is an essential feature of the medium that it has an endotoxin content of less than 500 endotoxin-unities per gram. Therefore, claim 1 of the main request is not entitled to its claimed priority date and the relevant date to be considered for the novelty assessment is the international filing date, i.e. 27 September 2000, which is later than the priority date of the post-published document E4. Consequently, document E4 belongs to the state of the art pursuant to A 54(3).

[9] The relevant passage of document E4, relied on by the [opponents], is Example 1, which describes a medium referred to as the ‘SF-medium’, used for the cultivation of Vero cells […]. This medium consisted of a mixture of DMEM, Ham’s F12 and L-Gln which was supplemented with a solution of one of two protein hydrolysates referred to respectively as the ‘hy-soy/UF, Quest 5X59100’ and the ‘hy-pep 1510, Quest’ […]. The content of a deep frozen ampoule of Vero cells – which are mammalian cells – was thawed and added to 9 ml of SF-medium. After centrifugation for 10 min at 1000 rpm, the pellet was resuspended in SF-medium, transferred to a Roux bottle and incubated at 37 ºC and 7% CO2 for at least 15 minutes. Therefore, the [opponents] have argued, that document E4 clearly and unambiguously describes a protein-free and serum-free medium for the cultivation of mammalian cells comprising a protein hydrolysate.

For the Board it remains to be assessed whether a skilled person at the priority date of document E4 was in a position to establish that one of the two protein hydrolysates was an ultrafiltered soy hydrolysate, at least 40% of which had a molecular weight less than or equal to 500 daltons.

[10] The question to be answered is whether there is sufficient evidence on file to convincingly establish, by applying the balance of probabilities as the standard of proof, that an ultrafiltered soy hydrolysate, at least 40% of which having a molecular weight of less than or equal to 500 daltons, was available to the public at the priority date of document E4 under one of the two designations ‘hy-pep 1510’ and ‘hy-soy/UF’.

[11] An answer to this question is provided by the two product information web pages from ‘Quest international’ of document E68, bearing the address ‘http://web.archive.org/web/20000308080227/www.sheffield-products.com/products/5...’ (emphasis added by the Board). As derivable from the address, and as argued by in particular [opponent 1] at the oral proceedings, said web pages were archived on 8 March 2000. This has not been contested by the appellant which at the same oral proceedings has similarly indicated that the another web page of document E68 bearing the address ‘http://web.archive.org/web/20030518162635/http://www.sheffield-products.com/phar...’ (emphasis added by the Board) was archived on 18 May 2003.

[12] As the two product information web pages mentioned in point 11 above were archived on 8 March 2000 they were made publicly available on the web at a date prior to the priority date of document E4. They describe ‘HyPep 1510’ as an ultrafiltered soy hydrolysate, 25,4% of which having a molecular weight less than 200 daltons and 57,5% of which having a molecular weight comprised in the closed interval of 200 to 500 daltons.

[13] Therefore, it can be concluded that an ultrafiltered soy hydrolysate, at least 40% of which having a molecular weight less than or equal to 500 daltons, has been commercialised by ‘Quest international’ before the priority date of document E4.

[14] The [patent proprietor] has argued that it was possible that the trademark ‘HyPep 1510’ had been used by ‘Quest International’ to designate a protein hydrolysate having different technical features. It has also contended that ‘Quest’ could have prepared a special protein hydrolysate to serve the only purpose of providing the SF-supplement of document E4. In the absence of any supporting evidence, theses arguments are not tenable.

[15] Additionally also document E79 was considered to be highly relevant for the novelty assessment. This document is a declaration, dated 27 November 2008, from Anthonie Kunst, the then R&D Director Proteins of Kerry Bio-Sciences, a company which was the successor of ‘Quest International’ (Quest).

According to this declaration, ‘HyPep 1510’, which is an ultrafiltered soy hydrolysate (see point 8 of E79), has been commercially available from ‘Quest’ and its successor since 1997 (see point 5 of document E79). Document E79 also states that the ‘HyPep 1510’ was available in 1999 and earlier in a form wherein 82,9% of it had a molecular weight of less than or equal to 500 daltons (see point 7 of document E79). Whereas document E79 is silent as to the molecular weight distribution of the ‘HyPep 1501’ available in 2000 - because the declaration was made in response to questions restricted to the ‘HyPep 1510’ sold prior to September 1999 - (see point 4 of E79), there is no evidence on file that the composition of ‘HyPep 1510’ produced between September 1999 and the priority date of document E4 (25 September 2000) had changed. While it is true that the catalogue number used along with the commercial designation ‘HyPep 1510’ has varied over the time (‘IPL:5X59053’ on the web page archived on 18 May 2003 of document E68 and ‘IPL:5Z10493’ on the web pages of the same document archived on 8 March 2003), this does not necessarily mean that the product has changed. It could also represent a change in the presentation of the product only. In view of the evidence on file, the Board concludes that document E79 rather confirms that ‘HyPep 1510’ described in the two product information web pages of document E68 archived on 8 March 2000 (see point 11 above) is the same as the one referred to in document E4.

[16] The appellant has argued that in the present case the ‘up to the hilt’ standard of proof should be applied rather than the standard of the balance of probabilities. The Board disagrees and asserts that the ‘up to the hilt’ standard, which was first developed in decision T 472/92, is to be applied for cases of public prior use where practically all the evidence in support of an alleged public prior use lay within the power and knowledge of the opponent(s) (see the Case Law, 6^th Edition, 2010, Chapter VI.H, Section 4.3.1, page 558).

[17] In view of the above remarks, the Board decides that document E4 describes a medium according to claim 1, which consequently lacks novelty. Therefore, the main request does not comply with the requirements of A 54(3).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

NB: This decision has already been presented on Le blog du droit européen des brevets (here).

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.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 1248/08 – What’s Your Number?

This is an appeal against the revocation of the European patent under consideration.

Claim 1 of the patent as granted read:

A coating solution for forming a film for cutting off heat radiation which contains fine particles of at least one hexaboride and fine particles of tin-containing indium oxide (ITO) or antimony-containing tin oxide (ATO), in a weight ratio of from 0.1:99.9 to 90:10, said hexaboride being represented as XB6 where X is Y, La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Lu, Sr or Ca provided that, when the hexaboride is LaB6, the weight ratio of LaB6 to ITO or LaB6 to ATO is not 18.6:81.4.

Claim 1 of the main request before the Board read:

A coating solution for forming a film for cutting off heat radiation which contains fine particles of LaB6 and fine particles of tin-containing indium oxide (ITO) or antimony-containing tin oxide (ATO), provided that the weight ratio of LaB6 to ITO is from 0.62:99.38 to 10.7:89.3 and the weight ratio of LaB6 and ATO is from 1.10:98.9 to 13.8:86.2. (my emphasis)

The opponent raised objections under A 123(2) against the value of LaB6/ITO of 0.62:99.38, which was based on the alleged disclosure of 0.09 for the LaB6 concentration. According to the opponent, this value was not unambiguously derivable from the application documents as originally filed.

The patent proprietor considered that the proposed value of “0.09” in example 1 of Table 1 was allowable because it was clearly and unambiguously derivable from the application documents as originally filed.

Moreover, the value was indirectly derivable from the plotted points in Figure 2 at the position x = LaB6 /(LaB6 + ITO) = 0.06 which agreed with the proposed value of 0.09 for the hexaboride concentration, but not with alternative values of “0.08” or even “0.05”.

The opponent argued that the scale of the axes and the plotted points in Figure 2 made it impossible to distinguish between 0.62% and 0.55%, and hence it could not be used to confirm the value of 0.09 in example 1 of Table 1.

The Board agreed with the opponent:

Amendments (A 123(2) and (3))

Main request […]

[1.1.1] In the application as filed (page 24, Table 1, first row, second column), a number pertaining to the value of the amount of the Lanthanum hexaboride used in example 1 was illegible and indecipherable. It was not clear whether it should read “0.08” or “0.09”, or even “0.05”.

The board is not persuaded by the appellant’s arguments that the actual disclosure of that figure was unequivocal and that it reads “0.09”.

According to the board, said value, in particular the number “9” thereof, is neither directly and unambiguously derivable from said Table 1 […] because the entry in question is so poorly legible that it may be interpreted as “0.08” or as “0.09” or even as “0.05”, nor can it be derived in an unambiguous manner from the position on the abscissa of the corresponding data points on the graph of example 1 in Figure 2 as filed. To avoid any ambiguity, a higher degree of accuracy would be required so that the position of the plotted points could be ascertained with a precision of as little as 0.07. Such a precision is, in the board’s opinion, impossible to achieve in view of the scale of the abscissa of Figure 2 and in view of the fact that the data “points” are represented by circles having themselves a diameter of at least about 0.05.

The application documents as originally filed are therefore ambiguous in this respect.

[1.1.2] In accordance with the established jurisprudence of the Boards of Appeal of the EPO, and contrary to the assertions of the appellant, in the case of a proposed amendment under A 123(2) or of a correction under R 139, the factual disclosure of a European patent application as originally filed has to be established to a rigorous standard, namely the standard of certainty “beyond reasonable doubt” (see T 113/86 [2.2]; T 383/88 [2.2.2]; T 581/91 [3, last three paragraphs]; T 723/02 [2.4]; T 1239/03 [3.3.3]). In the above-cited decisions, the boards explicitly rejected the “balance of probabilities”, the normal standard of proof in civil proceedings, as an appropriate criterion to be applied. In particular, it was decided in T 113/86 that

“amendments requested by the Patentee should not be allowed if there was the slightest doubt that the unamended patent could be construed differently to the patent as amended”.

In T 383/88 the board remarked that

“applying a lower standard could easily lead to undetected abuse by allowing amendments on the basis of ostensibly proven common general knowledge.”

[1.1.3] The board considers that the above-cited jurisprudence is eminently important and clearly applicable to the present case, where an analogous question of compliance or non-compliance with the requirements of A 123(2) needs to be decided, namely the question of whether a particular proposed feature is disclosed in the application documents as originally filed. Following the established jurisprudence, the board considers that the balance of probabilities is not an acceptable standard for determining the actual value and that this question should be [determined] on the basis of the rigorous standard of certainty characterised as “beyond reasonable doubt”. Therefore, the arguments of the appellant adopting a proof “on the balance of probability” in favour of the value of “0.09”, in particular the survey A6, must fail. According to this survey – conducted amongst partners and staff at Withers & Rogers LLP (the firm of the [patent proprietor’s] representative) – out of 72 test persons, a total of 67 indicated the relevant entry in Table 1 to be “0.09” without qualification. However, it was also found that two respondents indicated another figure (“0.08”) and that three further respondents who indicated “0.09” had also considered other possibilities. In the board’s opinion, therefore, these results demonstrate that the value in question cannot be considered to be “0.09” with a certainty “beyond reasonable doubt”, as required by the established jurisprudence. In any event, a question of accuracy and disclosure cannot be decided by a poll.

[1.1.4] The appellant also pointed to the priority document of the patent in suit and to the family patent document A8 (published 20 November 2001) as potential sources of supplemental original disclosure. This approach must fail, because the Enlarged Board of Appeal (EBA) ruled in decision G 11/91 [7] that

“[b]efore a correction can be made under R 88, second sentence, it has to be established in point of fact what actually a skilled person would derive, on the date of filing, from the parts of the European patent application relating to the disclosure. As a result of the prohibition of extension under A 123(2), documents other than the description, claims and drawings may only be used insofar as they are sufficient for proving the common general knowledge on the date of filing. On the other hand, documents not meeting this condition may not be used for a correction under R 88, second sentence, even if they were filed together with the European patent application. These include, inter alia, priority documents, the abstract and the like.” (emphasis added).

Therefore, the disclosure of the priority document cannot be used to supplement or replace parts of the disclosure of the application as originally filed. Nor can it be used to dispel doubts as to the meaning of an ambiguous part of the application.

The same applies to the family documents, for the reason that the text of another patent application based on the same priority document need not be identical to the European patent application.

[1.1.5] In view of the above reasoning, the lower limit of the ratio of LaB6 to ITO of 0.62:99.38 […] and derived from a weight ratio of 0.09 to 14.5 (Table 1, example 1) is not disclosed in the originally filed documents.

For comparison only, a weight ratio of 0.8 to 14:5 in example 1 would yield the weight ratio of 0.55:99.45.

The board observes that an amendment to 0.55:99.45 would also not be allowable because of a lack of a clear and unambiguous disclosure of the concentration value of 0.08 in Table 1 as originally filed.

The requirements of A 123(2) and (3) are thus not met. The main request [… is] not allowable.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

NB : The decision has already been reported on Le blog du droit européen des brevets (here).