EP 2 950 075 B1 relates to an on-road running test apparatus for a vehicle to be used when a running test of the vehicle is performed on a road.
Brief outline of the case
The OD decided maintenance according AR 3. The proprietor and the opponent appealed this decision.
Eventually, the case was remitted to the OD for further prosecution
The case is interesting as it relates to the public availability of a public prior use, E6=Exploration Guide, AVL M.O.V.E System Control 2013, v2.5, March 2013, AT3732D, Rev. 02. E6 is actually a handbook for a software.
The OD considered the public availability not to be given for E6, but the board held E6 as prior art under Art 54(2).
This led to the remittal to the OD.
The opponent’s point of view on the public availability of E6
During the OP before the OD, the opponent filed document E6e, i.e. a revision history of E6, in order to show that the revision number 2, was the revision number valid on 06.12.2013 (see E6c), i.e. on the date on which the handbook E6 had been delivered to the customer, Daimler AG.
The proprietor’s point of view on the public availability of E6
The issue of the revision number of E6 was raised for the first time by the proprietor three days before the scheduled OP.
The proprietor requested that E6e not be admitted in the procedure “as it was late-filed and as it could and should have been filed earlier since the opponent must prove beyond any doubt that E6 was made available to the public.
During OP before the board, the proprietor submitted that E6e was just a list of revision dates of E6. From this document alone it could not be inferred what was the actual situation at the time of the delivery of the handbook E6 to Daimler AG.
The proprietor argued that a version other than the one indicated in the revision history could have been delivered to Daimler AG before the priority date.
The proprietor also argued that E6 had only been distributed as part of a confidentiality agreement, since delivery note E6c referred to AVL’s General Terms and Conditions. The patentee referred to paragraphs 10.2 and 2.3 of the AVL General Terms and Conditions from which it had to be concluded that E6 must not be disclosed to third parties.
The OD’s position on the public availability of E6
The OD considered that E6e was admissible because it was prima facie relevant for proving whether the revision number 2 of the software handbook had been delivered to the customer Daimler or not.
The OD did however consider that the evidence provided by E6e was not sufficient to prove the public prior use of E6 up to the hilt.
The board’s decision of the public availability of E6
The board considered that the issue of which revision number of E6 had been the valid one on the date of delivery of the AVL test apparatus was raised by the patentee only three days before the OP. This short period of time had hindered the opponent to file all the necessary evidence during the first-instance proceedings.
Moreover, the evidence which the opponent managed to file within this short period of time of three days was actually admitted into the proceedings by the OD.
For the board, E6f, i.e. a notary certified protocol, merely supplements E6e, essentially by addressing the OD’s concerns about E6e as they were laid out in the appealed decision in an effort to overcome them.
Learning about these concerns at the OP did not allow any production of evidence like E6f; its submission with the statement of grounds of appeal was the realistic occasion.
The board was convinced beyond reasonable doubt, that E6 forms part of the prior art under Art 54(2).
While the actual version of the handbook E6 is not mentioned in the delivery note E6c, this missing information is to be found in E6e, the veracity and context of which is certified in E6f. It follows that there is no doubt that a handbook E6, version Rev. 2, was delivered to Daimler AG before the priority date of the patent.
Moreover, the AVL M.O.V.E. system described in E6 is not a product that was produced for just one customer, but for many. E6 is a user manual intended to be delivered to all purchasers of an AVL M.O.V.E system and, as a user manual, only describes how to use a product already purchased by the customer.
There is no presumption recognised in the jurisprudence for the existence of a non-disclosure agreement when it comes to the delivery of goods to one of many other end customers. On the contrary, the sale of a product to one of many other end customers, who generally wishes to dispose of the product freely, is considered to be a typical case of an unrestricted disclosure to the public.
The list in E6e was generated by the opponent’s general software tool for managing the company’s operational processes. There is no reason that the revision history in E6e does not accurately reflect the situation that existed in the past, especially on the date of delivery, in particular in view of the certification in E6f.
E6e in conjunction with E6f, unequivocally shows a unique assignment of the revision number and the validity date of the handbook E6. Contrary to the proprierietor’s speculation that a version other than the one indicated in the revision history could have been delivered to Daimler AG, the board sees no reason to believe that a handbook was delivered by AVL that would have been invalid under AVL’s procedural rules.
The board held that, while the production and distribution of the handbook E6 is not aimed at the entire population, it is, however, in fact aimed at a wide range of industrial and technical companies and organisations. Under this circumstance, there is no rationale for marketing a product under confidentiality obligations. Doing so would be impractical and even almost impossible to enforce.
For the board, an automatically enforceable confidentiality clause for a handbook would be unrealistic from an industrial point of view. In case that a legally binding non-disclosure agreement is to be entered into between two companies, it is typically done so deliberately by way of a dedicated written document, the terms of which have been negotiated.
E6 was thus considered as belonging to the prior art under Art 54(2).
In spite of the proprietor’s request not to remit, the board neverthelss decided, in view of the public availability of E6 to remit the case for further prosecution.
Comments
It is manifest that a handbook allowing a customer to use a product is not subject to an implicit non-disclosure agreement.
The present case shows that, for a public prior use by the opponent himself, the chain of evidence has to be continuous and without any flaw.
The good thing is that the board took the bother to admit the late filed document E6f. The board acknowledged that the opponent had no possibility to react fully upon an objection raised by the proprietor three days before the scheduled OP.
Had the opponent waited after filing its appeal or the reply to the proprietor’s appeal to file E6f, the chances of admitting E6f would have been quite remote.
Comments
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