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.

Thursday, February 28, 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.

Tuesday, January 22, 2019 T 623/18 - On the quality of the arguments in the statement

Sufficiently substantiated?

In the present case, the notice of opposition was based on the grounds of opposition under Article 100(a) EPC, in combination with Articles 54 and 56 EPC, and Article 100(b) EPC. Several documents were mentioned, some of which were con­si­dered in more detail in the reasons relating to the ground for opposition under Article 100(a) EPC.

However, the opposition division followed the proprietor in finding that none of the grounds for opposition was sufficiently substantiated within the meaning of Rule 76(2)(c) EPC, and thus held the opposition inadmissible.

With respect to Art. 100(a) EPC, one of the reasons was that the opponent's arguments failed to refer to the individual features of claim 1 and so did not enable the patent proprietor or the opposition division to reconstruct the novelty objection without making their own investigations.

The board disagrees with this conclusion. As summarized in reason 8, the board considers that Rule 76(2)(c) EPC does not require as much from the notice of opposition; in particular, whether the "written reasoned statement" enables the "patent proprietor and the opposition division to clearly understand the nature of the objection raised and the evidence and arguments adducted in its support" and whether "further investigations" are necessary for the patentee or the opposition division "to be able to form a definitive opinion on the grounds for opposition" (emphasis by the board) is, in the board's judgment, a matter for the allowability rather than the admissibility of the opposition.

Wednesday, May 24, 2017 T 540/13 - Impossible to establish whether facts or arguments were filed or not

The opposition division had informed opponent O1 that "The notice of opposition contains no statement of grounds on which the opposition is based (Rule 76(2)(c) EPC)" and that "the notice of opposition will be rejected by the opposition division as inadmissible...". The opposition division issued a decision revoking the European patent as the ground for opposition pursuant to Article 100(c) EPC prejudiced the maintenance of the patent as granted. In addition to revoking the patent, the title page of the decision states: "Additional decision: The opposition of the opponent(s) O1 is rejected as inadmissible". Appeals were filed by the patent proprietor and opponent O1.  In its statement of grounds of appeal, appellant-opponent O1 requested that "the decision of the Opposition Division that rejected Opponent O1's opposition on grounds of inadmissibility pursuant to Rule 77 EPC be set aside and that Opponent O1's opposition be considered admissible". The Opponent argued that the facts and arguments in support of the grounds for opposition required by Rule 76 EPC were included in the DHL package that was timely filed within the opposition period, whereas the opposition division held that "Facts and arguments substantiating the indicated grounds for opposition have not been filed within the opposition period. Even the paper confirmation received on 4 October 2007 ... did not comprise facts and arguments, as has been confirmed by file inspection". How did the Board deal with these opposite positions of Opponent O1 and the opposiion division? And how did this effect the party status of the Opponent?