Friday, 4 March 2016

T 2451/13 - Up to the hilt

Up to the hilt: the sword being plunged into an opponent with only the hilt remaining visible...

This decision summarizes the principles governing burden of proof in case of public prior use, and in particular, what is to be exactly understood as representing 'up-to-the-hilt'. When applied to the present case, the Board concludes that this standard is met...

If the publication date of a document originating from an opponent (or a subsidiary thereof) is in dispute, the opponent must prove that date "up to the hilt". The yardstick for this proof is that of "beyond reasonable doubt" rather than "absolute certainty" (point 3.2).
Reasons for the Decision

3.2 Publication date of D16

3.2.1 The copyright date indicated in D16 is 2002, which is about four years before the priority date of the patent (7 February 2006).

3.2.2 The appellant argued that, as set out in T 1257/04, a copyright date was of little value as evidence of public availability on that date. A copyright date was in particular not sufficient to show that this document was actually printed, let alone distributed, before the relevant date. Moreover, the appellant argued that the applicable standard of proof had to be "up to the hilt", i.e. absolute certainty rather than merely the balance of probabilities, since D16 originated from a company (Gerber) which was now a subsidiary of the respondent.

3.2.3 In cases of public prior use having taken place in the opponent's company or exclusive sphere of influence, the boards have indeed applied the very strict criterion of proof "up to the hilt". More specifically, as stated by the board in T 472/92 (point 3.1), in these cases "... an opponent must prove his case up to the hilt, for little if any evidence will be available to the patentee to establish the contradictory proposition that no prior public use had taken place".

3.2.4 T 472/92 did not specify precisely the conditions to be fulfilled in order for a party to prove its case "up to the hilt". However, when discussing the disputed issues, the board stated that its conclusions were based on "... an extremely high degree of certainty", which is thus clearly the yardstick - rather than "absolute certainty" - for "up-to-the hilt" proof. It is thus evident that the standard of "up to the hilt" does not require absolute certainty but that "an extremely high degree of certainty" suffices.

3.2.5 In subsequent decisions T 97/94, T 55/01 and T 2/09, this standard of proof was consistently interpreted to mean "beyond reasonable doubt":

"According to this decision [T 472/92], where practically all the evidence lies within the power of the opponent, the assessment of probability which normally underlies the boards' opinion must cede to a stricter criterion close to absolute conviction. In other words there should be a degree of certainty which is beyond all reasonable doubt" (T 97/94, point 5.1, insertion in square brackets by the present board).

"It is true that, in cases where only one party has access to information about an alleged public prior use, the case law has tended towards expecting that the public prior use be proved beyond any reasonable doubt ("up to the hilt"), answering the typical questions "What?", "When?", "Where?", "How?" and "To whom?", since the other party was reduced to merely pointing out inconsistencies or gaps in the chain of evidence; see T 472/92, reasons, point 3.1 (OJ EPO 1998, page 161)" (T 55/01, point 4.1).

"However, especially in cases where only one party had access to information about an alleged public prior use, the case law has tended toward expecting that the public prior use be proved beyond any reasonable doubt or "up to the hilt" (see e.g. T 55/01, point 4.1 of the Reasons, and T 472/92, OJ 1998, 161, point 3.1 of the Reasons)" (T 2/09, point 3.2).

Also in T 782/92, where a public prior use by the opponent had occurred, the standard of proof of "beyond reasonable doubt" was applied (point 2.2).

Lastly, in decision T 1553/06 (point 6.3.3), which dealt with the public availability of internet disclosures, it was stated that "Contrary to the opponent, the board regards the terms "beyond reasonable doubt" and the more colloquial term "up to the hilt" as being equivalent".

3.2.6 The board agrees with the appellant that the standard "up to the hilt" also applies to the present case. Document D16 originates from a company (Gerber) which is now a subsidiary of the respondent. Therefore, all the evidence about the publication date of D16 is essentially in the hands of the respondent.

It thus has to be examined whether the respondent has proven beyond reasonable doubt that D16 was available to the public before the priority date of the patent.

D16 addresses parents and gives them instructions on how to feed their infants. In view of this, it would be contrary to life experience to assume that D16 was not published but rather kept by Gerber in the drawer for about 4 years, i.e. until at least (after) the priority date of the patent. This is corroborated by D17, which is an advertisement of Gerber in the spring 2002 edition of the journal PediatricBasics. In this advertisement, Gerber gives the same recommendations to parents and, in part, uses the same pictures as in D16. The board is therefore convinced that it is not only more likely than not, but quite clearly beyond reasonable doubt that D16 was published before the priority date of the patent.

3.2.7 This finding is not at variance with T 1257/04 cited by the appellant. This decision concerns the question whether a document showing a date "9/94" could be assumed to have been printed within five months, namely before 24 February 1995, which was the priority date of the patent. That is a much shorter period than the four years in the present case. In fact, in decision T 743/89 (point 3) the board considered it reasonable to assume that the publication of a commercial brochure took place within 7 months and in decision T 804/05 (point 2) within 18 months after the date indicated in the document.

3.2.8 D16 thus constitutes prior art under Article 54(2) EPC.



For these reasons it is decided that:

The appeal is dismissed.

This decision T 2451/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T245113.20160114. The file wrapper can be found here. Image "Parts of a sword" by William Crochot obtained via Wikipedia under CC BY-SA 3.0 license (no changes made).


  1. would be interesting to know what the criteria for "an extremely high degree of certainty" are

    1. according to the above, when there's an absence of "reasonable doubt"