Sunday, 12 February 2017

T 1440/09 Public availability of document submitted for standardisation



In the past several discussions took place whether or not documents submitted to a standardisation organisation were public. After submitting the document to the standardisation organisation, the applicant put the document on the Internet, and only then was a patent application filed. The Board had the impression that the applicant thought that since the submission to the standardisation organisation was to be regarded as confidential, that this gave protection for a later submission of the patent application (a form of priority). The Board destroyed this dream.

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division to refuse European patent application No. 06 121 786.5 under Article 97(2) of the European Patent Convention (EPC).

II. The decision made reference inter alia to the following document:

D1: Woo-Jin Han et al.

"Symbol Prediction Techniques for SVC",

Joint Video Team (JVT) of ISO/IEC MPEG & ITU-T VCEG (ISO/IEC JTC1/SC29/WG11 and ITU-T SG16 Q.6) 15th Meeting: Busan, KR, 16 - 22 April 2005,

Retrieved from the internet:

URL http://ftp3.itu.ch/av-arch/jvt-site/2005_04_Busan/JVT-O063.doc, online 16 April 2005,

XP002417974.

III. The decision was based on claims 1 to 6 of a main and an auxiliary request and description pages 1 to 16 filed with letter of 2 October 2008. The application was refused mainly on the grounds that the subject-matter of independent claims 1 and 6 of the main request was not new with respect to D1 and that claims 1 and 6 of the auxiliary request infringed Article 123(2) EPC.

IV. Claim 6 of the main request reads as follows: ….

V. Claim 6 of the first auxiliary request reads as follows: ….

VI. The reasons for the decision may be summarised as follows: ….

VII. The applicant appealed. With the statement of grounds of appeal the appellant again filed the claims of the main request and the auxiliary request forming the basis of the appealed decision.

VIII. The appellant's arguments given in the statement of grounds of appeal may be summarised as follows: …

IX. The board issued a communication pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), annexed to a summons to oral proceedings. In this communication the board indicated that it tended to agree with the finding of lack of novelty of the subject-matter of claim 6 of the main request, and that the considerations as to lack of novelty seemed to apply equally to claim 6 of the auxiliary request.

X. With a letter dated 26 August 2013, the appellant maintained the claims of the main and the auxiliary request and filed claims of second and third auxiliary requests. The former auxiliary request was renumbered as the first auxiliary request. In this letter the appellant indicated that the amendments made in the second and third auxiliary requests were based at least on paragraphs [0033], [0034], [0040], [0043] and [0047] of the application as filed.

XI. Claim 1 of the second auxiliary request reads as follows: …

XII. Claim 1 of the third auxiliary request reads as follows: …

XIII. Oral proceedings before the board were held on 25 September 2013. During the oral proceedings the appellant contested, for the very first time, the public availability of D1. The appellant submitted that D1 may have been confidential at the priority date of the present application, in view of the "JVT Patent Disclosure Form" on pages 9 to 12 of D1, which indicated in point 2.0 that the submitter of D1 was "not aware of having any granted, pending, or planned patents associated with the technical content of the Recommendation | Standard or Contribution" and in view of the fact that the present application had been filed by the submitter after the submission of D1 to JVT. With respect to the further issues addressed by the board, the appellant relied on its written submissions only.

XIV. The appellant's final requests were that the decision under appeal be set aside and that a patent be granted on the basis of the claims according to the main request or the first auxiliary request, both filed with the statement of grounds of appeal, or one of the second or third auxiliary requests, both filed with the letter of 26 August 2013, and on the basis of the description pages 1 to 6 filed with the letter of 2 October 2008.

Reasons for the Decision

1. The appeal is admissible.

2. State of the art under Article 54(2) EPC 1973 - alleged confidentiality of D1

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

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

2.3 The "JVT Patent Disclosure Form" on pages 9 to 12 of D1 is a standard, preprinted form appended to the submitter's contribution. It provides the JVT with information about the patent status of techniques used in or proposed for incorporation in a recommendation or standard. JVT requires that all technical contributions be accompanied by this form. The intent is that the JVT experts should know in advance of any patent issues with particular proposals or techniques, so that these may be addressed well before final approval. The information is maintained in a "living list" by JVT during the progress of their work, on a best effort basis. The form is not a binding legal document; it is provided to JVT for information only (see D1, page 9, last two paragraphs and page 10, first two lines). The patent issues may concern patents of the submitting organisation or person (see D1, page 11) or of a third party (see D1, page 12).

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

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

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

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

3. Claim 6 of the main request:

novelty (Article 54(1) EPC 1973)

3.1 Document D1 discloses ...
In view of the above the board finds that the apparatus of claim 6 of the main request is not new within the meaning of Article 54(1) EPC 1973.

4. Claim 6 of the first auxiliary request:

novelty (Article 54(1) EPC 1973) ...

In view of the above the board finds that also the apparatus of claim 6 of the first auxiliary request is not new.

5. Claim 1 of the second auxiliary request:

added subject-matter (Article 123(2) EPC) ...

Thus the board finds that claim 1 of the second auxiliary request extends beyond the content of the application as filed and therefore infringes Article 123(2) EPC.

6. Claim 1 of the third auxiliary request:

added subject-matter (Article 123(2) EPC) ...

Thus the board finds that also claim 1 of the third auxiliary request infringes Article 123(2) EPC.

7. Hence none of the appellant's requests is allowable, and thus the appeal is to be dismissed.

Order

For these reasons it is decided that: The appeal is dismissed.

This decision T 1440/09 (pdf) has European Case Law Identifier: 
ECLI:EP:BA:2013:T144009.20130925  The file wrapper can be found here. Photo “Public foothpath" byAlex France obtained via Flickr under CC BY 2.0 license (no changes made)

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