Friday 7 September 2012

T 1817/08 – No Public Access?



The patent proprietor filed an appeal after the Opposition Division (OD) had revoked its patent for lack of novelty over document E3, a PhD thesis dated September 29, 1995, about two months before the priority date of the patent (November 21, 1995).

The Board found that E3 had not been available to the public in due time:

Public availability of E3

[3.1] The former opponent had argued in the notice of opposition that E3 was made available to the public on 27 September 1995. The former opponent referred to the fact that the first page of E3 reads: “Soutenue le 27 Septembre 1995 devant le jury composé de ...” and that presentations of doctoral theses were accessible to the public […].


[3.2] Together with the statement setting out the grounds of appeal the appellant provided a fax from the library of the University of Paris 12 Val-de-Marne as evidence indicating that E3 was signalled to the public in June 1996, i.e. after the priority date of the patent.

[3.3] It is therefore not apparent from the file whether E3 as a whole was (or which parts were) presented to a public audience on 27 September 1995. It is also not apparent whether the members of the jury were obliged to maintain secrecy or not. Thus it is not established that E3 was made available to the public before the date indicated in the library fax.

[3.4] The former opponent acknowledged that he could not prove a publication date of E3 before the priority date of the opposed patent and withdrew the opposition […].

[3.5] Although a board of appeal (and equally an OD) has an obligation under A 114(1) EPC 1973 to investigate matters of its own motion, that obligation does not extend as far as investigating an allegation of prior public use or a prior oral disclosure, where the party who formerly made that allegation has withdrawn from the proceedings and it is difficult to establish all the relevant facts without his co-operation (cf. decision T 129/88). Following this approach the board sees no need to pursue this matter of its own motion.

[3.6] Accordingly, the board finds that the public availability of E3 before the priority date of the patent in suit is not proven. Hence, E3 is not part of the state of the art.

[3.7] It follows from the above that the decision of the OD with respect to lack of novelty of claim 1 according to the second auxiliary request in view of E3 cannot be upheld.

Remittal

[4.1] Thus the appeal is allowable. However, the opponent in its notice of opposition had based its objections on documents other than E3. These objections were not the subject of the decision under appeal or of the appeal proceedings.

[4.2] In this situation, the board considers it appropriate to exercise its discretion pursuant to A 111(1) EPC 1973 to remit the case to the first instance for further prosecution on the basis of the appellant’s new main request and of its new first to third auxiliary requests. Since the patent had been revoked and although the opposition has been withdrawn in the meantime, the opposition division will have to examine whether the patent and the invention to which it relates according to the amended requests meet the requirements of the EPC.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

1 comments:

Roufousse T. Fairfly said...

Since the patent had been revoked and although the opposition has been withdrawn in the meantime, the opposition division will have to examine whether the patent and the invention to which it relates according to the amended requests meet the requirements of the EPC.

I wouldn't bet much on the OD to conduct very thorough ex-parte proceedings, and make a effort to base a revocation on the other evidence or other grounds, besides added subject-matter. The OPPO phase has already have been running for the last 8 years, and there are only four years left on this patent, which can easily be exhausted at the pace things are going.

The opponent basically threw the towel with his letter of withdrawal:

As it seems that despite all efforts the prior art document E3 actually has not been public prior art at the priority date of the Application and as that document formed the basis of the Opposition Division's decision, the opponent has come to the conclusion that the document E3 cannot be fairly cited against the validity of the patent opposed any longer and therefore the opposition is withdrawn.

A central revocation of the patent seems to me to be of interest only if national infringement proceedings are running or are threatened. According to the register, the patent is at this point only in force in DE and FR, and lapsed in GB, IT and SE back in 2008.