Wednesday, December 05, 2018 T 1890/15 - Giving oral evidence, or replacing representative's pleading

In the present case, the patent proprietor (appellant) lodged an appeal against the decision of the opposition division revoking the European patent and requests oral submissions of a technical expert as accompanying person to explain the skilled person's understanding. The Board applies the criteria of G 4/95 and concludes that these were not complied with, and exercises its discretion referred to in G 4/95 by not permitting the technical expert as an accompanying person to make oral submissions.

Additionally, the Board deliberates whether the Enlarged Board in G 4/95, and specifically when considering that Art. 117 EPC did not provide a legal basis for hearing oral submissions by an accompanying person involving the presentation of facts and evidence, means that the Enlarged Board considered that an accompanying person, in particular a technical expert, gives oral evidence by way of making oral submissions at the oral proceedings, or merely presents (legal or technical) arguments in place of the presentation of the case (pleading) by the professional representative.

The Board concludes that should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. 

Friday, November 04, 2016 T 564/12: proving public prior-use

In this opposition appeal there is initially an interesting discussion about the admissibility of two prior-use cases. The Appellant-proprietor asks the Board to declare these prior-use cases retroactively as non-admissible. Furthermore, the Appellant-proprietor is of the opinion that an author of one of the filed affidavits in one of these prior-use cases should have been called as a witness. According to the Appellant-proprietor, the affidavit should be excluded because the opposition Division did not call this author as a witness. 

The board decides that the prior-use cases are admissible. In general, it is quite difficult to prove public prior-use - the questions "what was disclosed", "when", "where"and "under which circumstances" must be answered. In this case quite a lot of evidence was filed by the Appellant-opponent - it was already filed during the opposition proceedings. This Board extensively examines the evidence to decide whether the prior use is proven or not. If you are interested in the prior-use reasonings, you should read the complete text that is provided below.

The invention relates to a lid of a snuff-box. I found it also interesting to see that the PCT publication of this case has only a 2 page description and has 5 claims in total. The limited amount of words written down in the original patent application have been compensated by all the documents drawn up during the opposition and appeal procedure.