Saturday, 9 December 2017

T 428/13 - Proving an oral disclosure

Not enough proof

This opponent tried to prove that Claim 1 of the main request had been orally disclosed.  The submitted proof included: the power point slides that were used in the presentation, an affidavit of the presenter, the colloquium report of the conference and the article on which the presentation was based (the latter two being published after the effective date). Unfortunately for the opponent it is not enough for the Board.
Reasons for the Decision 
3. Novelty
3.1 Novelty in view of D7 supported by D8 to D10
3.1.1 The oral disclosure D7 of Mr. Altena took place at the 57th Hardening Colloquium on 10. October 2001.
In the Affidavit D8, Mr. Altena describes what in his view has been presented at the conference by referring to Annex A1 (power point slides, which allegedly had been shown during the conference) and Annex A2 (representing preparation notes which allegedly reproduce the content of the talk held by Mr. Altena).
3.1.2 Concerning the content of an oral disclosure it is generally accepted case law, that a single declaration of the presenter of a lecture does not give sufficient proof of the content which has been disclosed orally or has been presented on slides prepared for the lecture (Case Law of the Boards of Appeal, Chapter I.C.3.2.2, see in particular T1212/97).
Following this generally accepted principle, the Affidavit of Mr. Altena (D8) on its own is not sufficient to give proof what had actually been disclosed orally when presenting the slides of Annex A1.
D9 and D10, which are a publication and a colloquium report on the same topic as the presentation D7, demonstrate that the content of the presentation of Mr. Altena was open to the public and that the presentation had taken place. However, these documents alone are not evidence of what had been disclosed orally. Furthermore, they are not prior art under Article 54(2) EPC themselves, since they have not been disclosed before the filing date of the contested patent.
Therefore it has not been demonstrated by the appellant to a sufficient standard what was orally made available to the public during the 57th Hardening Colloquium.
3.1.3 Thus, the Board concludes that it has not been shown that the subject-matter of claim 1 of the main request was orally made available at the conference in 2001.

This decision T 0428/13 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:T042813.20170919. The file wrapper can be found here. Photo by Noupload obtained via PixaBay under a CC0 license (no changes made).

1 comment :

  1. The problem at stake is very old: how to correctly report what has actually been orally disclosed during a conference?

    The speaker is too biased to give a true account, see T 1212/97.
    The minutes of a conference are published much later, and hence not usable as prior art in view of the date. Even if they could be in time, is what is in the minutes a true reproduction of the actual lecture, or merely a copy of the material used for the oral disclosure?

    The only way to show what has been disclosed orally at a conference is to bring in at least one participant to the conference as a witness.
    Easier said than done.