EP 3 184 453 B1 relates to a sealable container, a sealed container and process for making thereof.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board confirmed the rejection of the opposition.
The case is interesting in view of some of the documents submitted by the opponent.
Those were:
D21=Expert Report of Mark Strachan, 7 December 2018
D22=Expert report of Charles Shaw, 6 December 2018
D23=Judgment of the High Court of England and Wales: Quinn Packaging Ltd v Linpac Packaging Limited and R. Færch Plast A/S [2019] EWHC 2119 (IPEC). In this decision a UK patent belonging to Linpac, similr to the present one, was revoked for lack of IS.
D26=Declaration of Olaf Dolfin 5 April 2024
D27=Declaration of Neil Atkinson 14 March 2024.
The opponent requested, inter alia that the following question be referred to the EBA:
“To what extent must a deciding body, under the principle of free evaluation of evidence (G 2/21), consider multiple, consistent expert declarations as sufficient proof of a contested factual assertion of CGK, particularly when such declarations are submitted to meet an established burden of proof?”
The OD’s decision
The OD decided that the hearing of Mr. Strachan and/or Mr. Shaw on CGK was not necessary.
The OD decided that D23 was a court decision, and being a legal judgment, is not a recognised source for establishing or reflecting industry standards or best practices in technical fields and quoted CLB, I.C.2.8.5.
The OD decided not to admit D26 and D27 in the proceedings since they could not be considered as CGK because they are expert declarations and are not more relevant than D21 or D22 already on file.
The opponent’s point of view
The opponent argued that the OD did not sufficiently consider D21, D22 and D23 and erred in not admitting D26 and D27 into the opposition proceedings.
The opponent argued that under the principle of free evaluation of evidence, the expert reports should have been considered as proof of CGK.
According to the opponent, these expert reports proved that the provision of denesting features to ensure that stacked trays did not stick together formed part of the skilled person’s CGK and that the skilled person would recognise such denesting features in the tray of figure 3 of D4.
The opponent relied on D23, a judgment from the High Court of England and Wales, as evidence that the skilled person would regard the claimed subject-matter as obvious.
The opponent also argued that D26 and D27 had to be viewed together with D21 and D22 as corroborative, not merely cumulative, evidence that the skilled person would readily identify features in trays which are suitable for denesting. According to the appellant, the four declarations demonstrated a consensus of opinion regarding CGK.
Further, the OD had applied a formalistic standard that CGK should be proven by a textbook or monograph instead of freely evaluating the evidence, cf. G 2/21, and weighing up the declarations to form an overall picture of CGK in the field, as had been carried out, for example, in T 2196/15.
At the OP before the board, the opponent also referred to G 1/24, Reasons, 16, and the decisions of the Court of Appeal of the UPC in Meril v Edwards. UPC_CoA_464/2024 et al, 25 November 2025, and Amgen v Sanofi, UPC_CoA_528/2024, UPC_CoA_529/2024, 25 November 2025, and argued that these decisions demonstrated a desire for harmonisation which meant that a decision of a national court should be regarded as seriously persuasive.
The board’s decision
D21 and D22
The opponent has not argued that D21 and D22 demonstrate that relieving the denesting area relative to the flange formed part of the skilled person’s CGK. It is therefore unnecessary to consider these documents in relation to this feature.
D23 and the UPC decisions
The board noted, that decisions taken in national courts have no binding effect on the deciding bodies of the EPO as questions of patentability are to be decided solely in accordance with the EPC and referred to the CLBA, III.H.8.2.
As set out in R 21/09, Reasons 2.3 to 2.5. although decisions and opinions of other courts may be considered, caution should be exercised when dealing with such evidence as boards must come to their own independent conclusions.
The board also noted that the harmonisation philosophy behind the EPC generally refers to harmonisation of interpretation of the EPC, see G 5/83, Reasons 6; G 3/08, Reasons 7.2.2; Emotional Perception AI Limited v Comptroller General of Patents, Designs and Trade Marks [2026] UKSC 3, paragraphs 44 to 46 or to harmonisation of practice, G 1/24, Reasons 16. The objective of harmonisation does not require the EPO and national courts to reach identical conclusions in every individual case.
The board saw no error in the OD’s assessment merely because it reached a different conclusion from the High Court of England and Wales.
Admissibility of D26 and D27
The board held that the OD had discretion not to admit D26 and D27 as they were filed after the nine-month opposition period, in relation to the patent as granted and the subject of the proceedings had not changed.
The OD’s preliminary opinion did not raise any new issues, and the board was satisfied that the OD exercised its discretion according to the correct principles and in a reasonable manner. The was thus no reason for the board to reverse the OD’s decision.
The issue in the present case is whether the OD exercised its discretion correctly when it decided not to admit D26 and D27, whereas the opponent’s arguments concern the extent to which expert declarations may establish CGK of the skilled person. T 2196/15 did not concern the review of an OD’s discretionary decision and was therefore not applicable to the present case.
That denesting features in trays belong to the skilled person’s CGK was undisputed, but said features could readily be identified in figure 3 of D4 as alleged in any of the documents D21, D22, D26 and D27 no longer relates to said CGK, but merely to an expert’s personal assessment based on their own technical knowledge. Such assessments of a document, even if corroborative, cannot form CGK as it cannot be excluded that other experts may assess the document differently.
Referral to the EBA
It goes without saying that the board dismissed the request for referral to the EBA. The board merely noted that the principle of free evaluation of evidence precludes prescribing the weight to be given to a particular category of evidence.
Comments
The present decision should be a clear warning to parties in opposition, that a decision of a national court or of the UPC, cannot force a deciding body of the EPO to come to the same conclusion.
Deciding bodies are independent from each other, and free evaluation of evidence does not mean that the conclusions reached outside the EPO are binding to the latter.
What is subject to harmonisation is the interpretation of the EPC, not to arrive at identical conclusions.
In the present case, D23 was an English decision taken after cross-examination of experts of the parties. This procedure is unknown at the EPO. Expert declarations/opinions cannot be held representative of CGK as it is handled at the EPO.
As D26 and D27 did not bring anything more than D21 and D22 already stated, there was thus no reason to admit them.
Comments
32 replies on “T 1309/24-Experts opinions are not representative of CGK-Decisions from other jurisdictions are not binding for the EPO”
Thank you, Daniel, for flagging up a pair of Decisions that serve wonderfully to reveal the difference between England and the EPO, when it comes to the assessment today, of what was obvious back then, on the date of the claim. In the English Decision, D23 in the EPO opposition file, one needs to turn to paragraphs 57 to 67, dealing with “Claim 6, as proposed to be amended” to recite the “denesting area” feature.
As patent people, we all know that, with impermissible hindsight knowledge of some of the best inventions, the thought often occurs “Dammit. Why didn’t I think of that. Now I see it, it’s obvious” . Hence, hindsight must, somehow, be excluded. With that thought in mind, read para 67 of the English judgement. And then weep.
If jurists are looking for cases that cast in a good light the EPO’s way of adjudicating the obviousness issue. they should look here. English cross-examination of witnesses of fact is a brilliant way of getting to the truth of a complex set of circumstances. But is it really the best way to get to a decision on obviousness? I have my doubts.
How could the patent owner have convinced the English court of the presence of inventive activity? Can we perhaps blame the barrister acting for the patent owner, for not asking the expert witness the right questions? That would be a bit harsh, in my opinion. But does that mean that we are going to have opposite results, over and over again, when England and the EPO coinsider obviousness? What do you say, readers?
@ Max Drei,
Having had a second look at the case, it turns out that D4= GB 1 2471028, corresponds to the first priority dated 08.01.2010 (GB 201000310), published on 15.12.2010.
Neither of the priorities claimed were valid and D4 was prior art under Art 54(2). In the decision of the court, D23, amended claim 6, relating to the denesting feature, was held lacking IS and the patent was revoked. In said amended claim 6 the denesting recess/area, devoid of adhesive, was assumed to lie below the flange, cf. Point 58 of D23.
The problem is that in D4, there is no question whatsoever about a denesting feature, besides in amended claim 6. Fig 3 of D4 is identical to fig.3 of the present patent. As D4 is silent about denesting, adding a denesting feature in D4 would, according to the gold standard add matter to the original disclosure of D4. In point 62 of D23, the judge considered, against all odds, that Fig 3 was disclosing a denesting feature. Where did he get this idea from remains a mystery, as D4 is silent on denesting. The opponent’s expert must have put this flea in the judge’s ear.
In Point 63 it is said that “Both sides agreed that it is not possible to be sure whether the denesting area as shown in Figure 3 is below the peripheral flange or on the same level but without adhesive on its surface”. To conclude that then it is obvious not to put adhesive on a denesting feature which is not directly and unambiguously derivable from the disclosure of D4 is rather far fetched.
In Point 67 there is a mention of “a conflict of expert evidence”. This did not hinder the judge to come to the conclusion that the subject matter of amended claim 6 was obvious as he was more convinced by one expert than the other. D23 is to me a good example of an ex-post facto assessment of IS with added matter on top.
In the patent, the denesting feature is located in the corner of the tray. In such a situation, it should not come as a surprise that the decision of the EPO is different from that in the English court.
In this case, cross examination has not brought out the truth. D4 is totally silent as far as denesting is concerned. Denesting has been read in the disclosure of D4 against all odds. This reminds me of T 0307/24, commented in the present blog. In T 0307/24 the board, relying on G 1/24, read features in the disclosure which were not directly and unambiguously derivable. It does not mean that at EPO all is correct, even at the board’s level and English decisions are wrong.
However, another aspect appears also important: in the English court, there is a single judge deciding on technical issues he does not master. This is why he needs expert advice. At the EPO, the deciding body comprises at least two technically qualified members. This avoids decisions by only one person and makes a huge difference. Comparing the two decisions, it is manifest that the problem solution approach is a much more objective way to asses IS.
We will thus be faced by more opposite results, over and over again…..
At the risk of being boring, Daniel, I want to say that the judge in England fell into the notorious “I know it when I see it” trap. See Link below to Wikipedia. When contemplating obviousness with the benefit of hindsight, it is achingly easy to fall into that trap.
Applying adhesive with a roller was known, denesting recesses were known. Crucially, the patent owner’s technical expert was honestly unable to come up with any line of argument why the claimed solution to the denesting problem was anything other than obvious.
So the judge baulked at the thought of certifying the claim as inventive. His “common sense” told him that it couldn’t possibly be inventive. So, to do justice, he condemned the claim as obvious. Simple as that.
That’s the beauty of EPO-PSA. It shuts out hindsight.
https://en.wikipedia.org/wiki/I_know_it_when_I_see_it
I think inappropriate to comment on mastering of technical issues. English patent judges can also have a technical background (HH Fysh had a chemistry degree, Robin Jacobs a physics degree). The only thing certain is that it is statistically better when two persons are involved.
I’m not casting aspersions at the technical competence of English patents judges. And anyway, the technology here is that of removing the top container from a nested stack. Think: paper cups for your morning coffee.
What worries me is, rather, how to arrive at a conclusion that the duly granted claim is bad for obviousness. Below is a hypothetical, inspired by Judge Hacon’s para 67.
My bike lock has two rotating rings with the numbers 1 to 0. I know that the number 50 will unlock the bike but my neighbour doesn’t. It isn’t “obvious” to him how to unlock the bike, right?
But then suppose I ask him: have you any reason to not select the “5”? He has none. Then I ask him: any reason not to choose the “0” from the second ring? He has none.
Under the pressure of cross-examination, under oath, he agrees, that any one number is just as “obvious” a candidate as any one of the other numbers.
So is “50” obvious? What do you say? What, do you suppose, would His Honour Judge Hacon say? Would it make any difference if each disc had, say, only the numbers 1 to 4? Where’s the limit, when non-obvious flips to “obvious”? What principle shall we use, to decide?
Oops. For clarity, I should have written “0 to 9”. Ten numbers on each of the two rings. Sorry about that.
@ Max Drei,
You are not boring at all. You express the view that once the solution is in front of your eyes, it looks pretty obvious. I gave the example of the opercula which stays on the can once opened.
There is another example. In the 70s, when travelling, I had a kind of foldable trolley so that I could roll my case instead of trying to extend the length of my arms. Once the case was handed over at the gate, you were left with the foldable trolley and you had to carry it with you on the plane, until you got your case at the luggage delivery band. One person had the idea to incorporate the trolley in the case itself. First with two wheels, now with four. A brilliant idea, isn’t it?. Once you see it, it looks pretty obvious, but would you have thought of it?
To me “50” is as obvious as any other value you can represent with two dials with numbers from 0 to 9. If the number were 1 to 4, it would not be different. It is difficult to give a limit when non-obvious flips to obvious. Common sense and the PSA are the answer. .
As far as technical knowledge of civil law judges is concerned, I refer to my reply to A.Nonymous. It is a matter of fact, and by no means a judgement of value, that they do not, as a rule, have any technical knowledge.
D23 shows the limits of cross examination, and it is good that at the EPO only witnesses are ever heard and not experts in the meaning of Art 117(1,e). The judge has been clearly influenced by one of the experts, which should not have been the case.
@ A.Nonymous,
I can agree that some civil law judges have some technical knowledge, but their technical knowledge does not encompass all fields of technique. What does it help to have a physics degree, if the case at stake relates to biotech or chemistry. Conversely, some qualified representatives before the EPO have also a law degree and can act as lawyers in civil law courts. In both cases, those people are a very modest minority.
That civil law judges do not, as such, master technical issues, is not a judgement of value, but a statement of fact. This is why it is necessary for civil law judges acting in patent matters, to define the technical area, the skilled person and to interpret the claims. This is the only way for them to come to a proper decision.
Those facts have been revealed to me during a conference through the speech of a former LQJ at the German Patent Court. If a LQJ is able to acknowledge this fact, which authority do you have to comment on this. It is your comment which is totally inappropriate. You just escaped the deletion of your comment.
Another thought occurs. About advocacy in your own cause. If you yourself are unable to come up with an argument, why your own claimed subject matter is incentive, why should anybody else state à it is. That said, the point here is if course that it is not for the patent owner to argue inventiveness. Rather, the task rests with the petitioner for revocation, to give the court persuasive reasons why the claimed matter was obvious. At least at the EPO, silver tongues appealing to plain common sense was not enough to succeed in that task
@ Max Drei,
To me, the opponent’s attempt was doomed to fail. Why should the EPO accept expert evidence delivered under oath before an English court. This procedure is foreign to the EPC. The same applies to a decision of an English court, which on top of it is tainted by strong hindsight. The opponent had no real arguments and was, in my opinion, scrapping the bottom of the barrel.
In German I would say: im Nachhinein sind alle klüger…. Pech gehabt.
Under the principle of the free evaluation of evidence, the EPO should admit to the proceedings statements of fact given under oath. But then the tribunal must decide how much weight to give to that evidence But whether something was obvious is not a question of fact but one of law, based on findings of fact. It is not for a witness to tell the court what was obvious. On this basis I think the Board could decree that the evidence of the experts should be given no weight In my opinion, just because the English court uses a different procedure to find what were the facts is not a sound reason to refuse admission to evidence gathered in England. Sometimes, such evidence is of decicive importance in discovering what were the facts. Daniel I hope you agree
@ Max Drei,
I agree with you, that it is not for a witness to tell the court what was obvious. Before the EPO, a witness can only testify and confirm facts alleged in statement of grounds of opposition. No less, but certainly no more.
In the endoscope case, I referred to, the opponent’s employees had filed a declaration in lieu of oath. There is a difference between giving a testimony under oath, for instance before a court in a contracting state, and a declaration in lieu of oath filed at the EPO. But it was proven that those declarations in lieu of oath were not corresponding to the truth.
I have also seen affidavits of the inventor produced in procedures before the EPO, that the invention was not obvious in view of the prior art. Such a declaration, even under oath, cannot be taken seriously.
As there is no cross-examination before the EPO, I do not see why a deciding body of the EPO should be bound by an expert declaration given before an English court.
In the present case, the board made clear that another expert could come to a different opinion on what is consider CGK of the skilled person. It was thus correct to disregard the statements even made under oath before an English court.
Free evaluation of evidence does not thus imply that any statement made before a deciding body of another jurisdiction, even made under oath, or in lieu of oath, is to be admitted as corresponding to the actual truth by the EPO.
I agree.
The expert reports before the UK court are not evidence of the CGK of the skilled person, they explicitly state that they describe the « common general knowledge » of the experts. Which is somewhat oxymoric.
The experts reports are very informative but they miss the critical ingredient of hard evidence in the form of substantiating documentation. In that sense, they are not « facts » and it was logical for the EPO deciding bodies to decline taking them into account. If the expert reports had referred to specific documentation available at the filing date, the opponent could have relied on facts and I suppose the EPO deciding bodies would have found it appropriate to consider such documentation under the principle of free evaluation of evidence.
Mr Hagel, you surprised me when you declared that the sworn evidence of the opposing technical experts states “explicitly” that their own person common technical knowledge back at the date of the claim was exactly that of the hypothetical person of ordinary skill in the art. Can you perhaps point me to where exactly in the evidence you find that “explicit” statement?
As to documentation, yes of course, the evidence of contemporaneous documents, created before the date of the claim, provide powerful evidence of what the thinking and knowledge was, back then. But, often, a killer document addressing the specific iota of cgk on which the whole case turns, simply doesn’t exist. What then? The court still has to decide, and needs all the help it can get. In general, the court will find helpful the evidence of persons who, back then, were already expert in the field. They can testify as to what the “mental furniture” was, of the hypothetical person of “ordinary skill”. They can help the court to “don the mantle” of the POSITA.
The opposed experts know that their evidence will be cross-examined, ruthlessly, in one specific point, when the entire case turns on that point. If, under x-exam, their statements on that decisive point are found to be unconvincing, the other side wins the point. And so then the case. As here. Accordingly, they are extremely careful in the evidence they give, first in writing and then under x-exam. Perhaps it is this terror of being caught out that is unhelpful to the court. It inhibits the witness from saying more than the bare minimum. It will tend to encourage litigators to choose as expert witnesses not so much the person with ideal qualifications for the task but, rather an extremely self-confident extrovert person, able to cope with the terror of x-exam, or even enjoy it.
As we see, the English system is certainly not perfect but it certainly is inherently horribly expensive.
Max, I think you may have misread Francis Hagel’s comment.
He doesn’t say that the experts explicitly equate their own knowledge with that of the notional skilled person’s CGK.
To the contrary, he states (I believe correctly) that they are (explicitly) attesting to their own “common general knowledge”. This may or may not be the same as that of the skilled person. From the various English judgments that I have read, it seems that while experts might attempt to distinguish between their own highly-specialised knowledge and the lower standard generally expected of the notional skilled person, they rarely succeed in doing so.
Interesting, Mouse. I’m not a specialist litigator in the patents courts of England so I hesitate to declare whether you and Mr Hagel see it right or wrong.
Can we perhaps agree though, that the judge in England, in order to decide the obviousness issue, needs to know what was the cgk of the POSITA at the date of the claim. The adversarial parties try to get this fact across to the judge, in the most convincing manner they can devise, with the evidence of their opposing technical witnesses, whose specialism in the relevant technical field goes back to long before the date of the claim.
What the cgk was, of any particular “expert” at the date of the claim, is irrelevant, and even misleading, right?
@ Max Drei,
I see a problem in calling experts acting in English courts “witness experts”. They are witnesses in that they appear to testify under oath, but they are not witnesses in the meaning of Art 117(1,d). Witnesses at the EPO can only confirm facts alleged in the statement of grounds of opposition.
I have never seen an expert in the meaning of Art 117(1,e) having been heard at the EPO. Some parties try to change the status of their accompanying persons, i.e. an expert for this party, and request those persons to be heard as a witness under Art 117(1,d). or as an expert under Art 117(1,e). Those attempts have never been successful. Rightly so, be it only for the fact that they were sitting all along in the OP.
For this reason alone, the EPO might take knowledge of what “expert witnesses” might have said in an English court, even about the cgk, but those statements cannot be held determining at the EPO as the two procedures are quite different.
An expert in the field cannot be considered as a depository of the cgk in that field if his statement about the cgk is not supported by documentary evidence. The case law of the boards has developed a coherent set of criteria allowing to decide what represents cgk.
Without any documentary evidence, the “mental furniture” of the skilled person is the opinion of the expert, and is, in this respect, highly questionable.
I do not claim that such an expert would blatantly lie, he has a reputation to keep, but it is not acceptable as being the true representation of the cgk of the skilled person in the field.
Daniel, as to how the tribunal (Judge, Division, Board, whatever) decides what was the cgk at the date of the claim there is indeed a big difference between England and the European mainland.
Under the English adversarial system, the judge is deemed not to know it. The parties have to prove it to the tribunal. In their written Decision, the judge is required to rely exclusively on the evidence adduced by the parties. So, as a litigant, you have to prove what you assert. Anything else is just hand-waving “attorney argument” which carries no probative weight whatever.
But at the EPO (correct me if I’m wrong) the judges can rely on their own technical qualifications and experience to divine whether the decisive fact was or was not within the cgk. Which reminds me of that notorious statement by that old American judge (albeit in the context of an obscenity trial) that “I know it when I see it”.
Not surprising then, that England and the mainland disagree about how best to fix the cgk.
But hey, that’s the beauty of Europe, isn’t it? We have many different approaches and can argue in a civilised way, which are the best and worst aspects of any one particular approach.
@ Anon Y. Mouse,
I do not think it is for a third party/commenter to attempt giving explanations about a statement made in a preceding comment. What gives you the right to interfere in a discussion between two commenters? Do you know better what either have said or have been meant to say? Reasonable doubts are permitted.
I think this is not the right way to behave. Any explanation should come from the original commenter and the one who replied, should either feel the necessity to do so.
To sum it up, I find your attitude thoroughly inappropriate.
If Max drei had not replied by return of post, I would have deleted your comment.
Mr Thomas,
You will not be surprised that I was pleased to read the response of Anon Y. Mouse to MaxDrei, it was a perfect understanding of my comment. It was relevant to the issue of whether expert evidence before a UK court has to be considered by the EPO for the assessment of CGK. This is why I do not quite understand your reaction that you considered Anon Y. Mouse’ s response inappropriate. It seems to me that if a commenter reacts to an exchange between two other commenters, this adds value to your blog. More people, more ideas ! But this is your blog, it is for you to decide.
That being said, I see that we agree that the CGK has to be substantiated by hard evidence available at the relevant date.
A personal opinion which I would like to express even though it is not relevant to this thread : as to the value of UK court proceedings, I find impressive in general the thoroughness of the decisions. And the expert evidence was truly informative as to the technical background, even though it was not properly substantiated by undisputable documentation. But as MaxDrei noted, UK proceedings are extremely expensive. The legal profession in the UK has high prestige and attracts top talents.
Mr Hagel,
I have my reasons for disliking anonymous comments. It is not the first time that a person calling itself “Anon Y. Mouse” comes up with comments, on the present blog and in other blogs, which are in my opinion, inappropriate. As you say, it is for me to decide, at least on my blog.
I have no doubts that decisions of English courts are thorough and well argued. The way to come to a decision is however fundamentally different from that on the mainland. As far as the costs of litigation is concerned, it is certainly high, and resorting to a court is only done if parties cannot agree. It is probably for good reasons that the English way of deciding in court has never crossed The Channel.
As far as costs are concerned, I would allow myself to claim that costs at the UPC are as well in a higher bracket, and tends towards costs in England. Simply the fact that in first instance a decision has to be taken within 12 months, raises the costs at even higher levels.
The haste with which decisions must be taken stems from the RoP and not from the UPCA itself. The RoP where never submitted to the parliaments before ratification.
When one considers the composition of the drafting committee of the RoP, its members made sure that they would earn a lot. The UPC is not for the benefit of European industry in general and SMEs in particular, but for big lawyer firms being internationally active.
@ Max Drei-03.09.2026
In view of the different approaches across The Channel, and due to the fact that on the mainland patent matters are always dealt with by 3 people, it is not surprising that England and the mainland disagree about how best to fix the cgk.
Contrary to civil law judges, at the EPO, any deciding body comprises at least three technically qualified members. There is thus no need to define the skilled person, and case law of the boards has given clear directions on what evidence is needed to demonstrate CGK.
This is why I am still of the opinion that the opponent’s attempt to bring in expert evidence given before an English court was doomed to fail.
Europe is beautiful, but since Brexit, I am asking whether the UK in general, and England in particular, are still part of Europe. Please accept my tong in the cheek.
Daniel, I think we have more or less exhausted the subject of discussion but before we all walk away from the thread I want to add just one more point, as follows:
There is a decisive difference between a US judge declaring that whether someting is obscene and an EPO tribunal declaring what is cgk.
It is not OK for the US judge to dismiss the issue with the statement “I know it when I see it”. But it is OK for an EPO tribunal, fixed with the task of declaring whether any given fact is cgk, to declare that “we know it when we see it”. Why? Because the EPO tribunal members are each technical “experts” in the relevant technical field.
@MaxDrei
I do not agree that it is OK for technical Board members to define the CGK just because they have a technical background. The CGK must always be substantiated by evidence.
The field of expertise of a technical Board member must not be equated to the field of the invention (the art of the skilled person), which is extremely specific.
Let’s se what DXT says. But the way I see it, the parties will agree in general about what the POSITA knows or does not know. It will be just one specific point of the cgk on which the parties will argue. How the EPO tribunal decides which party has the more persuasive argument on that specific point of cgk is what interests me. Daniel?
@MaxDrei
I do not agree that it is OK for technical Board members to define the CGK just because they have a technical background. The CGK must always be substantiated by evidence.
The field of expertise of a technical Board member must not be equated to the field of the invention (the art of the skilled person), which is extremely specific.
Mr Hagel,
I cannot but agree with you that CGK has to be supported by corresponding documentary evidence, unless it is absolutely trivial.
In T 1092/12, T 1370/15 or T 2526/19, the respective boards held that a board is allowed to introduce new ex officio CGK without evidence of such knowledge which prejudices maintenance of the patent to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field.
I find these decisions abusive to say the least. If a first instance division or an opponent would come with such an argumentation, they would be put back in place straight away by the board. The boards are not above the law. If a board alleges a fact, the onus of proof lies with that board.
In the end, it comes down to the tribunal including in its written decision the reasons why it prefers the story told by one party, over the alternative story told by the other side. In England, the judge has to say why the one witness was more persuasive than the other. At the EPO it is, clearly different. Do they always give reasons on cgk that are convincing? I’m not sure. I suspect that, often, they simply write that based on their own technical knowledge, they found the one story easier to accept than the other. In other words, they know it when they see it.
On this topic, the case law I.D.8.1.1 is forceful :
“In T 1462/14 the board noted that the skilled person was a notional entity that had been elaborated on by the case law of the boards of appeal in order to serve as an objective reference when deciding on various issues under the EPC. This notional person could not be equated with any real person in the technical field of the invention. Neither an inventor, nor an opponent, nor an examiner, nor a member of a board of appeal, could be equated with the skilled person. This also applied to a representative.”
In T 1462/14, the reference to representatives is noteworthy.
Mr Hagel,
What has been said in CLBA I.D.8.1.1, corresponds, for once, to Reasons 14-15 of T 1462/14.
There has never been any doubt at the EPO that the skilled person is a notional person.
When I used to teach newcomers in the profession, I always told them that, in spite of many years in the patent business, by now 50+ years, I never shook hands with a skilled person.
For me, the interesting thing is that also textbooks are never written by the imaginary skilled person. Instead, they are written by experts. So , both In England and at the EPO, it is what experts say, that fixes the cgk . The key difference is of course that the textbook was written before the date of the claim. The problem is that the textbook writers will often see no need to tell their readers what they know already, that is, the common general knowledge of those readers. The tribunal thus has to divine what it is, as best it can, from whatever text in the book is relevant
@MaxDrei,
I was involved in a case as an opponent before a Board (T 1173/00) in which expert evidence was found persuasive and instrumental to the decision to revoke the patent for violation of Art 83. The evidence was a written report describing the state of the art in the very specific area of « high temperature » supraconductive wires at the priority date. The issue was whether a critical component, namely HT supraconductive wires fit for use in high power transformers for locomotives, was readily available to the skilled person at the priority date. The report was authored by a leading academic expert in this area and was found persuasive by the Board because it relied on 9 publications predating the priority date.
The patent proprietor made the argument that the report was not objective since the report had been commissioned by the opponent. The Board dismissed this argument, noting that the expert had already reached the conclusion of his report in several prior publications (cited in the report) he had himself authored.
This case shows that expert evidence can be found persuasive provided it is supported by adequate documentation.