Monday, December 28, 2020 T 1604/16 - Boards have competence to review points of fact

What did this car look like before the repairs?

This is a decision with the second highest distribution classification 'B'. They do no not occur that often, so the issuing board considered this to be an important case. 

In first instance opposition proceedings, the opposition division concluded that a car sold by the opponent was novelty impairing prior use. This was evidenced by hearing the car buyer as a witness. In appeal the opposition has been withdrawn, and the board wonders if it is allowed to challenge the findings of fact established in first instance. The recent decision T 1418/17 suggests that a Board of appeal should not do so. This board does not agree, and provides the following catchword:

The boards have competence to review appealed decisions in full, including points of law and fact. This applies also to findings of fact of the department of first instance which are based, at least in part, on the evaluation of witness evidence obtained in the course of hearing a witness (reasons, point 3.1 and sub-points).

Friday, August 18, 2017 T 1921/12 - Who should sign a 'decision'

In this decision the Board of Appeal is annoyed about the fact that a Rule 140 Correction of a decision of the Examining Division (signed by the whole division) and a Rule 139 Correction of an obvious error (signed only by the primary examiner in the opposition period, i.e. after grant; G 1/10 stopping this process was not yet issued) are not in the public part of the file.

The Board sees the R.139 correction as not valid since no formally correct decision is taken; it would require the signature of the whole Examining Division.   

In the decision several aspects of the problem-solution approach are re-discussed. The Board is also not keen on hearing witnesses. 

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.

Friday, March 25, 2016 T 2054/11 - Witness not a gap-filler

In this opposition appeal, the appellant alleges that the Opposition Division committed a substantial procedural violation in that it failed to hear a witness.

The case concerns an alleged public prior use. During opposition proceedings, the opponent (now appellant) attempted to substantiate the public prior use (i.e., the "what, when, how...") by submitting, amongst others, an affidavit of a witness (mr. Steinparzer).

However, the Board concludes that the opponent had at no point in the procedure explicitly named mr. Steinparzer as a witness to be heard, nor requested him to be heard, nor indicated why mr. Steinparzer was to be heard. As such, the Board concludes that the Opposition Division did not commit a substantial procedural violation by refraining from hearing the witness.

The Board further concludes that hearing the witness would also not helped the opponent's case, since the opponent apparently relied on the witness to fill 'gaps' in the substantiation of the public prior use since it was found to be incomplete. However, the Board confirms that witnesses can only be used to 'harden' the substantiation, but not to fill gaps therein.