EP 3 858 608 B1 relates to a multilayer plastic composite film, based on recycled plastic.
Brief outline of the case
The patent was revoked as the requests were infringing Art 84, 123(2) and lacked N or IS over D3=Tagungsbeitrag “Recycled PE in Food Contact Applications – a Case Study”, FuturePack Conference, 10. September 2019, Oslo. The content of D3 was corroborated with D4 and D12.
The board confirmed the revocation.
The whole discussion turned about the probative value of the presentation D3, i.e. whether it belonged or not to the prior art under Art 54(2).
In its decision, the OD found that it could be assumed with a sufficiently high degree of probability that the presentation D3 had been made available to the public.
The proprietor’s point of view on the probative value of D3
For the proprietor it was not clear that D12 referred to the presentation D3. The title of the presentation mentioned in D12 differs from that of D3, as it states ‘PC’ instead of ‘PE’.
However, ‘PC’ refers to polycarbonate and not to polyethylene (PE). In this regard, it cannot be assumed that this is merely a typographical error. Furthermore, D12 is not a sworn statement. The annex referred to in D12 is also missing.
A connection between the presentation in D3 and D12 has therefore not been proven. As regards the offer of witness evidence in this regard, it is questionable whether a speaker could still reliably recall a presentation given in 2019 more than six years after the event.
As regards D4, the relevant content of D3 is not reproduced therein. It is therefore possible that a different presentation, with a slide identical to that shown in D4, may have been delivered. D4 cannot substantiate either the scope or the content of the presentation given, nor whether the presentation D3 was delivered at all. As held in T 1212/97, the relevant case law of the boards of appeal requires an unambiguous disclosure of the subject-matter in question where a temporary disclosure is present.
It must be established beyond doubt which specific technical content was made publicly available and that this content was also comprehensible to the audience. Otherwise, as in the present case with D3, the document in question is excluded from the state of the art. The failure to take the audience’s perception into account in the contested decision led, as a result of an error of law, to the classification of D3 as part of the state of the art.
The proprietor also referred to T 421/14.
In the present case we were in a situation of “non liquet“.
The board’s decision on the probative value of D3
The board reminded of the notion of free evaluation of evidence.
In the case of a “non liquet” – the failure to prove the disputed fact is to the detriment of the party bearing the burden of proof, and the fact is treated in law as if it had not occurred, see T 2463/22, Reasons 4.5.6 to 4.5.11.
In determining whether the information described in D3 was public, the board applied the standard of proof of “balance of probability”. Accordingly, the alleged facts are proven as soon as the members of the board are of the opinion that the publication had occurred.
The stricter standard of proof, which requires a level of certainty “up to the hilt”, has been applied in case law only in exceptional cases where, in the case of a public prior use, all the evidence was within the control of the opponent and was not accessible to the proprietor, see CLBA, 11th edition, 2026, III.G.4.3.2.b. Such circumstances do not exist in the present case.
The conference at which the presentation containing the disputed content was delivered was open to the public. It was not organised by the opposing party, and neither the speaker, Ms Nilsen, nor Mr Myhre, who also attended the presentation, were employees of the opposing party.
In this respect, there is no need to consider further whether the standard of proof of “up to the hilt” should still be applied at all in proceedings before the EPO, which appears to have been ruled out in some recent decisions of the boards , see, for example, T 1138/20, to which reference is made in T 2463/22, Reasons 4.5.5 and 4.5.6.
The proprietor’s submission that it had no access to the presentation and could no longer reconstruct its content retrospectively does not lead to a different assessment.
The conference at which the presentation was given was public and therefore freely accessible. In this context, it must be borne in mind that, during the opposition proceedings, the proprietor expressly objected to the hearing of the witnesses proposed by Opponent 1 and did not request such hearing in appeal.
In the opposition proceedings, the proprietor justified this on the grounds that it was not its responsibility to fill gaps in the opponent’s case. However, this line of argument misses the point.
Given the circumstances of the present case, it would have been possible for the proprietor to attempt to rebut the evidence submitted by the opponent, for example by hearing the witnesses not associated with the opponent. No use of this opportunity was made. Furthermore, contrary to the proprietor’s submissions, the board cannot identify any gaps in the evidence presented by the opponent.
Furthermore, D3 contains a non-ephemeral content in the form of sequential, numbered slides, unlike a purely oral presentation or one accompanied only by a loose sequence of illustrations or slides, as was the case in T 1212/97 and T 2003/08.
The proprietor’s argument that an oral presentation, owing to its ephemeral nature, requires a particularly high standard of proof to determine the scope of disclosure is therefore unconvincing for this reason alone.
In the board’s view, the mere form of the presentation cannot, on grounds of principle alone, lead to a change in the standard of proof to be applied. In this regard, the board concurs with T 0733/23, Reasons 3.3, according to which the standard of proof does not always vary depending on the specific circumstances of the individual case.
The board dismissed the relevance of T 0421/14, with reference to Reasons 7.5 and 7.10 of said decision. The proprietor’s argument that, owing to its ephemeral nature, an oral presentation requires a particularly high standard of proof to determine the scope of disclosure was therefore unconvincing for this reason alone, and, moreover, is not required in T 421/14, Reasons 7.10.
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The present decision is questionable
In T 428/13, Reasons 3.1.2, the board held that it is generally accepted case law, that a single declaration of the presenter of a lecture does not give sufficient proof of the content which has been disclosed orally or has been presented on slides prepared for the lecture. The board referred to the CLBA, Chapter I.C.3.2.2, and to T 1212/97. This decision still figures in the 11th edition of the CLBA.
In so far as D3, D4 and D12 are concerned, they all find their origin in the same company. The presenter of D3 was an employee of Norner Research AS. D4 was a publication of Norner Research AS, and a further employee of Norner Research AS was co-signatory with the presenter of D12.
There can thus be reasonable doubts whether the criterion of “balance of probability” was sufficient in the present case. There might have been a presentation D3, but this presentation is only corroborated by employees of a company and not by a member of the public. The present board made rather light of T 1212/97 and manifestly misunderstood Reasons 7.10 of T 0421/14.
Reasons 7.10 of T 0421/14 relate to C31 which is a slide presentation. One reads: “Slides are typically used as the basis of an oral presentation. No evidence is on file from which it may be inferred that the slides of C31 were handed out in printed form at the conference, or that all of the slides were shown to an audience. There is no evidence regarding the manner or speed of the oral presentation. The printed content of the slides alone is insufficient for establishing what precisely the members of the audience would have understood, and retained, from an oral presentation at the ACTRIMS/ECTRIMS conference during which all or some of the slides of C31 may have been shown. Hence, and irrespective of the standard of proof applied, the content of C31 cannot be considered to be prior art”.
This does not correspond to the present board’s statement in Reasons 2.4.7 of the decision.
In D12 it is merely alleged that “A handout of the presentation was also made available to the audience upon request”. There is no evidence on file that this was actually the case.
In view of this, it is difficult to understand, why the proprietor did not take the opportunity of hearing witnesses as proposed by the opponent, even if in the present case the oral disclosure was not by any person linked with the opponent. This is the more so since proprietor was never given a copy of D3.
The company behind D2, D4 and D12, had a legitimate interest to see the patent revoked.
Two lines of case law in matter of public disclosure
For a long time, the case law of board made a distinction whether the elements of a public prior use/disclosure where exclusively in the hands of an opponent or not.
In the first situation, the criterion “up to the hilt” was applied.
In the second situation, the criterion of “balance of probabilities” was applied.
Irrespective of the situation, the notion of free evaluation of evidence has made inroads in procedures before the EPO, especially since G 2/21.
However, it would be a pity if the distinction between the two situations would be abandoned. At least the parties knew what they had to do.
The aim of the present board was manifestly to push the adoption of the balance of probabilities also in case of a public prior use by the opponent himself. The legal member of the board did manifestly not appreciate to be told that an erreor in law had been committed.
T 1138/20 was commented in the present blog.
T 2463/22 was commented in the present blog.
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