Thursday, 28 February 2019

T 0414/17 - Public prior use need not be substantiated up to the hilt for admissibility

In this opposition appeal case, the opposition was rejected as being inadmissible for lack of substantiation. After withdrawal of the ground of Art. 100(b), the only remaining ground of opposition was lack of novelty (Art. 110(a)) based on public prior use, whereby the opponent submitted a product catalogue, bill of materials, drawings and also offered a witness. The patent proprietor had contested that the opposition was inadmissible because it failed to indicate the facts and evidence of the public prior use, particularly with regard to "where", "when", "how" ("under which circumstances") or by "whom" the use took place. The Opposition Division agreed on the basis that the submitted catalogue provided no evidence of to whom and when a sale occurred.

The opponent argued that the Opposition Division had apparently confused the issues of (formal) admissibility and (substantive) allowability, and had committed a procedural violation for not raising the issue of admissibility in the summons to oral proceedings. The Board concluded that because the proprietor had raised the issue of admissibility, the opponent could have expected it to be the first topic of discussion at oral proceedings, since admissibility is a prerequisite for any subsequent substantive discussion. The Board therefore held that no procedural violation had occurred, but did find that the Opposition Division has reached erroneous conclusions.

Specifically, the Board found that for the purposes of admissibility, an alleged prior use needs to be substantiated only to the extent sufficient for the Opposition Division and the proprietor to understand the case. Communications from the Division and the proprietor, prior to the oral hearing, demonstrated that both the Division and the proprietor understood the case, which by itself is sufficient to establish admissibility. The Board further noted that the offering of a witness is a further admissible means of evidence, the probative value of which cannot be ascertained before it has been presented.

The Board therefore set aside the decision and remitted the case to the Opposition Division for further prosecution.

Summary of Facts and Submissions
I. The present appeal lies from the decision of the opposition division dated 15 December 2016 to reject the opposition, filed against European patent N° 2 581 485 based on the grounds of Article 100(a) and (b) EPC, as inadmissible for not meeting the requirements of Rule 76(2)(c) EPC.
II. The opponent (hereinafter "the appellant") filed an appeal against this decision by letter dated 14 February 2017 and paid the appeal fee on the same date. The statement setting out the grounds of appeal was filed by letter dated 10 April 2017.
III. The appellant contended that the opposition division erred in its decision and argued in its statement of grounds in particular that admissibility of an opposition ought to be considered at the expiry of the nine-month opposition period and on the basis of the opposition as a whole, i.e. not on the basis of an isolated ground for opposition.
The appellant also argued that the opposition division committed a procedural violation in not addressing this issue in the communication accompanying the summons to oral proceedings while using it as the exclusive basis for its decision.
Finally, the appellant submitted that the opposition division apparently confused the issues of (formal) admissibility and (substantive) allowability of an opposition and argued that its right to be heard at the oral proceedings had been unduly restricted, thus preventing it from presenting a proper defence of its case.
The appellant's main request as per its written submissions was thus to set the contested decision aside, i.e. to declare the opposition admissible, and to remit the case to the opposition division for further consideration.
IV. In its reply to the grounds of appeal the patent proprietor (in the following "the respondent") contested the admissibility of the opposition centering on the argument that "the notice of opposition fails to indicate facts and evidence concerning the prior use".
The respondent requested (in writing) rejection or dismissal of the appeal.
V. Oral proceedings were held before the Board on 15 January 2019, in accordance with the respective requests of both parties.
At the end of the oral proceedings the Chairman announced the Board's decision.
Reasons for the Decision
1. The appeal was held to be admissible
2. Admissibility of the opposition
2.1 Article 100(b) EPC
The Board, in confirmation of its preliminary opinion set out in the communication in preparation of the oral proceedings, finds that the ground of opposition pursuant to Article 100(b) EPC was substantiated in the notice of opposition.
This is found sufficient to establish admissibility of the opposition independently of the later fate of the argument, in particular without regard to the fact that it was withdrawn at the oral proceedings before the opposition division. It is established case law that an indication of facts, evidence and arguments in support of even only one ground of opposition is enough to render the opposition admissible as a whole. Further, this should be established on the basis of the documentation and arguments available at the expiry of the nine-month opposition period (cf. Case Law of the Boards of Appeal, 8th edition 2016, IV.D.2.2.8).
2.2 Article 100(a) EPC
In view of the fact that the ground of opposition pursuant to Article 100(b) EPC was withdrawn and considering that the appellant has requested the remittal of the case for further prosecution, the opposition's admissibility in this particular case needs also to be decided in respect of the ground of opposition pursuant to Article 100(a) EPC and in particular whether the ground of opposition under Article 100(a) EPC has been substantiated. Only if the opposition is found admissible also in this respect, can the requested remittal, the alleged substantial procedural violation and the reimbursement of the appeal fee be decided upon.
2.2.1 The appellant argued that the opposition division apparently confused admissibility and substantive allowability of the opposition when examining the alleged prior use. "An indication of the facts and evidence presented in support of this ground" (Rule 76(2)(c) EPC) had been furnished in the notice of opposition. It had also been established "what" was on offer. The aspects of "when" and "where" in relation to the alleged prior use were to be found in the submitted catalogue. A specific user could not have been named, as the product was intended for the mass market. Means of evidence were also filed (a catalogue, bill of materials, drawings) and a witness had been offered.
2.2.2 The respondent argued that, although the object of the alleged prior use ("what") could be inferred, no facts were indicated in the notice of opposition as to "where", "when", "how" ("under which circumstances") or by "whom" the use took place. A catalogue was not sufficient proof of a sale, no buyer was ever named and no specific date(s) were mentioned, the mere reference to a time "before the opposed patent's priority date" not being sufficient to establish the relevant time frame with enough specificity.
2.2.3 The Board however notes that according to established case law the substantiation of an alleged prior use for the purposes of admissibility needs answer the questions of "what", "when", "where", "by whom" and "how" only to the extent allowing the opposition division and the patent proprietor to understand the case. It need not be conclusive nor fully supported by appropriate evidence, since these are issues for the substantive examination of the allegation (cf. Case Law of the Boards of Appeal, op. cit. 2.2.9 c)).
2.2.4 The notice of opposition refers to April 2009 as the reference date (filing date of the contested patent: 14 October 2011) and to a specific product, including drawings purportedly corresponding to said product and allegedly showing all technical characteristics of the patented product (claim 8). Supported by the catalogue, the notice of opposition also indicates the circumstances under which the product was allegedly made available to the public, i.e. by advertisement and offer for sale.
2.2.5 It appears from both the communication in preparation of the oral proceedings and the contested decision that the opposition division was able to understand the case (which would indeed point to an admissible opposition/opposition ground) but had considerable doubts as to whether various aspects were sufficiently proven (which would call only the possible success of the objection made under the opposition ground into question).
The opposition division was indeed able to proceed to an analysis of the submitted facts and evidence and to draw certain technical conclusions as to their relevance (see point 7 of the communication dated 10 December 2015 in preparation for the oral proceedings).
Also the patent proprietor's reply to the notice of opposition shows sufficient understanding of the case put forward for a meaningful rebuttal. The technical relevance of the allegedly prior used oven is discussed in considerable detail. Also, questions are raised regarding the probatory value of the submitted evidence.
2.2.6 The Board considers that the aforementioned elements, identifiable from the notice of opposition, are per se already sufficient to establish admissibility. The doubts surrounding in particular the public availability of the product concerned, which are reiterated in more detail in the proprietor's further written submissions and in the contested decision, are matters to be considered in the framework of the substantive allowability discussion.
In this latter context, it is incidentally noted that offering of a witness is an admissible means of evidence (Article 117(1)(d) EPC), the value of which should not be pre-empted on the hypothesis of what the said witness can or cannot say; the probative value of a means of evidence cannot be ascertained before it has been presented and the content of a witness statement cannot be known before the witness is actually heard.
2.2.7 The patent proprietor requested in this context that the Board refers the following question to the Enlarged Board of Appeal (EBA), which it considered as having a particular bearing on the decision to be taken in respect of the admissibility of the ground of opposition pursuant to Article 100(a) EPC and thus, indirectly, of the opposition itself (original text annexed to the minutes of the oral proceedings, where the question was presented for the first time; here, translation into the language of proceedings by the Board):
"Is the indication that a certain product was put on the market before the priority date a sufficient indication to substantiate the presented facts relating to a prior use pursuant to Rule 76(2)(c) EPC?"
The Board finds that in the circumstances of the case no decision of the EBA is required for the purposes of ensuring uniform application of the law or for dealing with a point of law of fundamental importance arising here as required by Article 112(1)(a) EPC. The question can already be answered on the basis of the relevant facts on file. Hence it cannot be considered as giving raise to a point of law of fundamental importance. Specifically, the submission "before the priority date" is supplemented in the present case by the chronology on the catalogue and drawings, so that it becomes clear that the relevant time period is 2009. For the purposes of substantiation this is found to be sufficiently specific.
2.2.8 It follows from the preceding considerations that the allegation of prior use in support of the opposition ground pursuant to Article 100(a) EPC was substantiated to render both the ground and thereby also the opposition itself admissible.
3. Alleged procedural violations; reimbursement of the appeal fee
The appellant argued both in writing and at the oral proceedings that the opposition division committed several (substantial) procedural violations in not mentioning the admissibility problems in its communication, in not considering subsequently filed evidence and by limiting the appellant's right to be heard at the oral proceedings in opposition.
The Board notes that the admissibility of the opposition is to be checked in every phase of the opposition and the ensuing appeal proceedings (Case Law of the Boards of Appeal, op. cit., 2.3.2). Moreover, the admissibility had been contested by the patent proprietor. It was therefore to be expected that it would be the very first topic of discussion at the oral proceedings, as it is the absolute prerequisite to any substantive discussion.
The fact that intermediately filed evidence was not considered can be ascribed to the fact that the admissibility of the opposition was not acknowledged. Non-admissible facts and evidence need not be further examined, if they do not contribute to the admissibility discussion.
In the circumstances of the case the Board cannot find that procedural violations were committed, rather a series of erroneous conclusions were reached. It follows that the conditions of Rule 103(1)(a) EPC are not met, so that the request for reimbursement of the appeal fee has to be rejected.
4. Remittal
Pursuant to Article 111(1), second sentence EPC the Board has discretion regarding the remittal of the case to the opposition division for further prosecution. In view of the issues to be decided in this case, in particular the outstanding proof issues and the potential necessity of hearing of a witness offered by the appellant, the Board decided to exercise its discretion as requested by the appellant, namely to remit the case to the opposition division for further prosecution.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division for further prosecution.

This decision T 0414/17 (pdf) has European Case Law Identifier ECLI:EP:BA:2019:T041417.20190115. The file wrapper can be found here. Image by IIIBlackhartIII obtained under Pixabay License,

1 comment :

  1. Interesting. One month later, I had a similar case before a different Board;

    Here (see Reason 6.2.2), the Board also decided that the Opposition Division was wrong in not admitting evidence submitted and a witness statement offered with the Notice of Opposition. However, the Board decided that the Opposition Division was right in disregarding the evidence and the witness because of a lack of indication of the when, what and how of the alleged prior use. The case was not remitted to the first instance and decided on based on other available evidence.

    It looks like in T 0414/17 the opponent was 'lucky' to not have any additional grounds and evidence that could make for an admissible opposition and to now get a second chance to discuss the prior use with the Opposition Division. However, he may struggle with substantiating the prior use there again.