Wednesday, December 18, 2019 T 2037/18 - The burden of proof lies with YOU when a fact is favourable to YOUR case

In this case, the Board overturned a decision of the opposition division rejecting the opposition as inadmissible. 

The opposition was based solely on public prior use. The opponent submitted documents and drawings relating to a rail vehicle that had been handed over and accepted by a customer prior to the filing date of the opposed patent. The opposition division was of the opinion that in the period around the acceptance of a rail vehicle, it can be expected that improvements will still need to be made and that in this period an implicit obligation of confidentiality exists between the manufacturer and customer. In the facts and evidence provided with the Notice of opposition, there was no evidence that a confidentiality agreement did not exist and the division took the view that the opposition was therefore insufficiently substantiated.

The Board held that the opponent had provided the necessary evidence in support of the facts that were favourable to its case - i.e. the sale of a rail vehicle, and answering the questions: when, what, where, how and by whom? 

A sale constitutes public prior use, unless there is an obligation of confidentiality. The existence of such an obligation is a fact favourable to the patent proprietor. Based on the principle of "negativa non sunt probanda" applied in most legal systems, the burden of proof  then lies with patent proprietor. The opponent should not be required to prove non-existence.

The Board further concluded that there is nothing in case law to suggest that an implicit obligation of confidentiality exists where the delivery of rail vehicles is concerned.  The case was remitted to the opposition division for further prosecution.

Facts and submissions

(Redacted machine translation)

I. With this appeal, the opponent (hereinafter: appellant) is attacking the decision of the opposition division of June 12, 2018, against the patent EP 2 619 063, to reject the submitted opposition as inadmissible.

II. In the opposition, the appellant had stated that the train 02 of the TDR class 460 it manufactured - like the trains 01 and 03 to 16 – became publicly available through prior use when it was handed over to the operating company "Transregio Deutsche Regionalbahn GmbH" and subsequently accepted on 12 December 2008, and (with the features evident from Annexes D1 / D2) thus anticipate the subject of the patent in a way that is harmful to novelty. Upon acceptance, all parts of the train, which had not yet been painted, had been examined in detail, in particular the relevant stem at the end of the short coupling and the base frame, on which all weld seams were visible. The train is therefore part of the prior art for the invention on which the opposition patent is based.

III. The opposition division did not consider this evidence sufficient to substantiate the opposition. In general, in the period around the handover / acceptance of trains, in which individual improvements still have to be made, an implicit confidentiality must be assumed in the manufacturer-customer relationship. There was therefore no precise information in the notice of opposition, which would have been likely to contradict this, based on probable assumption of life experience, in particular references to corresponding contractual agreements.

IV. The appellant is of the opinion that the opposition division has overstepped the requirements for an admissible opposition.

a) It had proceeded on the basis of an incorrect basic assumption. With the handover of a train from the manufacturer to the operator, the power of disposal was transferred to the operator; the manufacturer could then no longer control who became aware of the technical measures installed in the train. It therefore corresponds to life experience that all technical innovations are legally protected before the vehicles are handed over.

b) There is also a strong interest on the customer side to be able to use the vehicle in question at will. Therefore, it is unreasonable that customers should feel responsible for possible patent protection of the manufacturer of innovations in the vehicle; Rather, they would assume that the manufacturer had already protected their innovations in their own interest prior to the handover.

c) Such innovations are more of an exception, since most of the components of a train are based on proven technology.

d) The opposition division's approach to require the opponent to provide a statement, establishing that the recipient was not required to maintain secrecy for a particular assembly when the vehicle was handed over, leads to a double negative.

e) Extending the burden of proof so far is not justifiable. On the contrary, the opponent, when substantiating his objection, could have assumed the typical boundary conditions that an operator will assume that technical innovations are the exception and, moreover, are normally protected by patents before being handed over.

f) It was then up to the patent owner to demonstrate that the vehicle handover was subject to different boundary conditions than is otherwise customary.

g) Something different cannot be inferred from the circumstances, given that, after the handover, defects may still have to be remedied (as stated in the acceptance report D4 in the case at issue).

h) Finally, the confidentiality notice regularly present on technical drawings, does not lead to a different assessment. This says nothing about whether a component shown on the workshop drawing constitutes a technical innovation or is based on a technical principle that was used previously. It should only prevent 1:1 replication by competitors, but does not allow any conclusions to be drawn about any patentable content of the drawing.

i) The clause relates to copyright and only refers to the representation in the drawings and not automatically to the technical features then implemented in the trains produced. Without further notice from the manufacturer, these had therefore not already become the subject of the confidentiality agreement in Section 14.1 of the purchase contract with the owner of the trains because of the clause on the workshop drawings.

V. The appellant requested that the contested decision be set aside, the admissibility of the opposition determined, and the case referred back to the opposition division for further hearing.

The respondent (patent proprietor) requested that the appeal be dismissed and suggested that the board should consider a referral to the Enlarged Board of Appeal.

VI. The respondent agrees with the opposition division's view and adds:
a) In the grounds of opposition, the appellant had not dealt with the question of whether the alleged prior use of the TDR 460 series was publicly available. However, this would have been necessary due to the agreement in the industry of confidentiality on technical details between the manufacturer and the operator.

b) There was a specific reason for this because of the confidentiality notes on the workshop drawings and parts lists D1, D1A, D2 and D2A and a confidentiality clause in the framework contract with the owner "Angel Trains Limited" D11.

c) It was not clear why the confidentiality requirement, which is intended to prevent competitors from gaining knowledge of the content of the development during the development of a rail vehicle, should end with delivery to an operator.

d) Since the appellant had not given any further reasons in the notice of opposition why the technical details were nevertheless to be regarded as known to the public, there was no substantiation of this point. The mere heading and the reference to handover and acceptance were not sufficient against the background.

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Reasons for the decision

The appeal is admissible and well founded. It leads to the annulment of the contested decision and the referral back to the opposition division. The board did not consider a referral to the Enlarged Board of Appeal to be necessary.

1. It is recognized in the case law of the boards of appeal that the requirement of substantiation under Rule 76 (2) c), point 3, "EPC" as well as the statement of the facts and evidence used for the reasoning "wants to achieve that the opponent's position in the Notice of opposition is set out so clearly that both the patent proprietor and the opposition division know what the opposition is about (T 228/85) and can check that it is justified; It does not matter whether the arguments presented are conclusive or even convincing (T 234/86, Reasons No. 2.1. to 2.4, T 426/08, Reasons No. 5.1.3, T 934/99, Reasons No. 6).

2. Public prior use is sufficiently substantiated if the time (when?), Object (what?) And circumstances of the act of use (how, including where and by whom?) Are stated and evidence is provided. Whether the facts presented are or will be proven is a matter of reason. "Proof that the alleged prior use was actually public is therefore irrelevant to the admissibility of the objection, but may be of importance in assessing the substantive validity of the objection", cf. Case law of the Boards of Appeal 2019, IV.C.2.2.8.d) with further decision quotes. The non-existence of a non-disclosure agreement does not therefore have to be proven in the opposition.

3. However, whether the objection must contain information on any confidentiality agreements is answered in accordance with the relevant rules for allocating the burden of proof.

4. In most legal systems and in the proceedings before the EPO, the burden of proof is distributed in such a way that each party has to present and prove the facts that are favourable to it, that is, the facts that support its own claim ( T 219/83, reason No. 13; T 270/90, reason No. 2.1).

5. With regard to the question of what can be said to be novelty-destroying disclosures, Article 54 (2) EPC states: "The state of the art is everything available to the public before the filing date of the European patent application by written or oral description or made accessible in any other way. "

6. It is recognized in the case law of the Boards of Appeal that information is made available to the public if even a single member of the public is able to access and understand this information and is not bound by a confidentiality obligation (see, for example, T 1081/01, reason no. 5, with further evidence). The sale of a ready-to-use item to a third party is the typical case of making it available to the public (see T 482/89, reasons No. 3), because the third party is usually interested in freely disposing of the item.

7. When an item is sold to a customer, the item and the technical features recognizable by it are therefore made publicly available when they are handed over to the buyer (positive fact), unless the buyer was bound by a confidentiality obligation (negative fact). If a prior use is made in opposition, the first fact is favourable to the opponent, while the second fact is favorable to the patent owner, since it would exclude the buyer from the public sphere.

8. According to the rules of burden of proof set out above, the handover to a buyer must be carried out and proven by the opponent (T 326/93, reasons No. 4.1), but establishing the binding of the recipient by a confidentiality agreement is the Patent holder’s responsibility (T 221/91, reasons No. 2 at the end; T 969/90, reasons No. 3.3). The principle "negativa non sunt probanda", also recognized in the case law of the boards of appeal (cf. R 15/11, reasons No. 5; R 4/17, reasons No. 4), expresses this burden of proof vividly: a party must not be obliged to prove a negative fact; rather, it is on the other side to prove, if necessary, the positive fact favorable to it.

9. Therefore, in the present case, the opponent had to disclose the details of the disclosure to a third person (here to the operating company "Transregio Deutsche Regionalbahn GmbH"). It was up to the patent proprietor to establish that a non-disclosure agreement was in place.

10. The burden of proof may change if a party has either proved the facts it has presented prima facie (T 382/93, reasons 5.6.3 and 5.6.4) or if a party has presented and demonstrated circumstances that speak for an actual presumption (T 743/89, reasons No. 3, sometimes also referred to as proof of the first appearance) and it is therefore up to the other party to present and prove facts (T 109/91, reasons No. 2.10) , from which it follows that the facts are to be assessed differently than they appear prima facie or based on the presumption.

11. However, the change in the burden of proof is only triggered by the prima facie evidence or the presentation of a typical course of events, based on an actual presumption, by the party primarily burdened with evidence (T 570/08, reasons No. 1.1.4 at the end). It is only as a consequence of this that it is the responsibility of the opposing party, who is then subject to secondary evidence, to counter the evidence or to shake the presumption (T 1162/07, reasons No. 3.3).

12. It follows that the opponent can only prove that there is no obligation to maintain secrecy if the patent proprietor has prima facie proven the existence of such an obligation or has presented factual circumstances that suggest an implicit agreement of confidentiality. At the same time, this means that such a change in the burden of proof can be triggered for the first time by a submission by the patent proprietor in response to the opposition. It is only then that there is a need to present a non-disclosure obligation.

13.To summarize, this means that the patent proprietor's submission may lead to a secondary burden of proof for the opponent, but only 'ex nunc' and therefore without effect on the requirement for substantiation within the scope of the notice of opposition pursuant to Rule 76 (2 ) c), 3rd point EPC.

14. This is not in conflict with the fact that in some decisions (T 522/94, reasons 24; T 897/01, reasons 2.5.1; T 837/02, reasons 2.9) the non-existence of confidentiality agreements had to be included in the facts necessary to substantiate an obvious prior use in opposition. None of these decisions, in particular T 522/94, on which the patent proprietor sought to rely in the present proceedings (see reasons 24 and 26 there), examined the question in more detail.
15. Ultimately, therefore, an obiter dicta is concerned and not divergent decisions which would give rise to a referral to the Enlarged Board of Appeal under Article 112 (1) a) 1.  On the contrary, it should be assumed that, should the question become relevant again, boards either follow the route that is proposed here, which is well-founded, or, if this does not convince them, lay down differing considerations in accordance with Article 20 (1) RPBA or the decision taken here will be used as a reason for submitting it to the Enlarged Board of Appeal

16. A referral is also not consistent with Article 112 (1) a)
Since the board is already able to rule on the case using the recognized principles of the law of evidence developed in the case law of the boards of appeal; moreover - which is also supported by the fact that the question has never been relevant in more than 40 years alone - there should be no case of fundamental importance.

17. The question may arise whether the case would have to be assessed differently if the opponent himself describes in the opposition circumstances that justify one of the presumptions recognized in the case law of the Boards of Appeal for the existence of a confidentiality agreement, such as the fact that the subject matter of the invention was only revealed to the partner of a development cooperation well before the phase of market entry.

18. The present case is also different from that to be decided in T 887/90; because the drawings containing a confidentiality note were only sent as part of an offer that never led to a delivery of goods and should themselves form the subject of the obvious prior use (T 887/90, reasons 3). Here, on the other hand, the train to which the design drawing refers was delivered and accepted. The drawings only serve to illustrate and prove the design of these details in the process.

19. Therefore, the respondent's reasoning, which is based on the confidentiality note on the drawings, should not ultimately prevail. This note protects the drawings and their content, i.e. the dimensions and details evident from them, against unauthorized duplication and distribution. The conclusion that the details of the components, which do not have to be taken from the drawings but can also be identified on the trains themselves after delivery and acceptance, must therefore be kept secret from this note alone neither from the copyright section nor from the general statement that the assertion of claims in the event of the granting of technical property rights is reserved.

20. Ultimately, however, the circumstances described in paragraphs 18 and 19 will only become meaningful at the level of substantiation; they could not provide a reason for rejecting the opposition as inadmissible for the reasons mentioned above 3 to 13.

21. Since the opposition is admissible contrary to the decision of the opposition division, the opposition proceedings must be carried out on the merits and a decision must be taken on the substance of the opposition. In this situation, it seems advisable to remit the case to the opposition division under Article 111 EPC and Article 11 RPBA.

22. A reimbursement of the appeal fee was not to be ordered (ex officio), since the opposition division only followed an incorrect legal opinion, but did not commit any significant procedural errors.

For these reasons it is decided:
1. The contested decision is set aside.
2. The admissibility of the opposition is determined.
3. The matter is referred back to the opposition division for further hearing.

 This decision T 2037/18 (pdf) has European Case Law Identifier: ECLI:EP:BA:2019:T203718.20191016

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