EP 2 628 396 B1 relates to a powder mix comprising pectin that easily dissolves in cold water.
Brief outline of the case
The opposition was rejected and both opponents appealed the decision.
The opposition was rejected as the OD considered that a public prior use (PPU) was not sufficiently documented. This actually represented a change over the position taken in the annex to the summons.
The board considered that the PPU was sufficiently documented, and considered claim 1 as granted as lacking N over the PPU. The same applied to AR1 and 2. AR3 was lacking IS over the PPU as CPA.
In the present blog entry, we will concentrate on the standard of proof.
The opponent’s point of view on the PPU
The opponents argued that, in view of T 1138/20, a lower standard of proof than that of beyond reasonable doubt had to be applied. However, even if the beyond reasonable doubt standard was applied, it would be met. The public prior uses (PPU 1 to 8) discussed during the opposition proceedings had been made available to the public, as had been shown by the comprehensive and coherent evidence.
The proprietor’s point of view on the PPU
The proprietor argued that the applicable standard of proof for determining whether the alleged prior uses, in particular the one regarding PPU 5, had been made available to the public was beyond reasonable doubt.
T 1138/20 was an isolated decision that deviated from the settled case law on the standard of proof for prior uses and should not be applied.
T 1138/20 was not compatible with G 2/21 either.
The reference to the “required” standard of proof in G 2/21, Reasons 31, indicated that, also according to the EBA, there was more than one standard of proof in the proceedings before the EPO.
In applying the beyond reasonable doubt standard in the case in hand, the crucial point was, beyond the demonstration of the sale, was the absence of a signed delivery note, so it was not proven that the product had actually been handed over to the buyer.
The board’s decision
The board considered that in evaluation of evidence two possibilities were to be envisaged.
On the one hand, under the principle of free evaluation of evidence, the deciding body must not observe any formal rules when assessing evidence, such as giving one means of evidence, as such, more weight than another. Accordingly, a lower probative value must not be systematically attributed to e.g. witness statements on a prior use from real life, than to written evidence such as patent specifications.
On the other hand, there is an imbalance in that one of the parties to the proceedings has access to the evidence and the other does not. The party that contests the prior use usually has little or no access to evidence that could support its case. All it can do is, essentially, point out inconsistencies or gaps in the chain of evidence provided by the other party.
Referring to the CLBA EPO, 10th edn., 2022, III.G.4.3, the board noted:
“The EPO standard of proof is generally the balance of probabilities. By way of exception, the standard of proof of the balance of probabilities is shifted to a standard of proof beyond reasonable doubt mainly in opposition where only the opponent has access to information (evidence) concerning, for example, an alleged public prior use.”
In the presnt board’s view, under the principle of free evaluation of evidence, it is always decisive in the evaluation of evidence that the members of the deciding body are personally “convinced”. Moreover, they must always be convinced of whether, as stated in T 1138/20, “the alleged fact has occurred“. Both is true regardless of which standard of proof is applied.
The standard of proof refers to the nature or degree of conviction that the members of the deciding body must have to be satisfied that an alleged fact occurred, see T 832/22, Reasons 3.2.4.
Accordingly, under the balance of probabilities standard, the members of the deciding body must be convinced, on the balance of probabilities, i.e. consider it more likely than not, that the alleged fact indeed occurred.
Under the beyond reasonable doubt standard, the members of the deciding body must be convinced beyond reasonable doubt that the alleged fact indeed occurred.
Hence, although the term “conviction” by itself excludes concepts like mere “reasonable suspicion“, referring to the deciding body’s conviction that an alleged fact occurred, see T 1138/20, Reasons 1.2.1, last paragraph and T 1311/21, Reasons 3.2.1(d)(vi), does not, strictly speaking, on its own say anything about which standard of proof should be applied by the deciding body to arrive at this conviction.
The board referred to House of Lords, Re B (Children) [2008] UKHL 35, in which it is said, inter alia, that “T]he standard of proof […] is […] the degree of persuasion which the tribunal must feel before it decides that the fact in issue did happen”.
The board concluded that, firstly, that the standard of proof is related to the required degree of conviction of the members of the deciding body. Secondly, that it is not related to what is evaluated by the deciding body. Hence, also when a lower standard of proof such as balance of probabilities is applied, the deciding body must assess whether or not the alleged fact indeed occurred.
The board referred to statements of the EBA in G 2/21. The principle of free evaluation of evidence requires the deciding body to decide according to its own “conviction”, and the subject of the evaluation of evidence is always “the correctness or incorrectness of a contested allegation as to fact”, G 2/21, Reasons 31, respectively “whether an alleged fact has occurred or not“, G 2/21, Reasons 45. The standard of proof is the yardstick against which “all the arguments for and against a factual statement” must be put “in relation to” for a judge to be “personally convinced of the truth of the factual allegation”, G 2/21, Reasons 31.
If the deciding body is convinced beyond reasonable doubt that an alleged fact occurred, there is no need to decide how many standards of proof there are and which one is applicable, see T 832/22, Reasons 3.2.6.
When assessing factual allegations using the standard of proof of beyond reasonable doubt, the board noted that, firstly, the EPO is an independent international organisation with its own autonomous legal order. Accordingly, the beyond reasonable doubt standard has an autonomous meaning within this legal order. This meaning may differ from the meaning attached to this notion in other legal orders, for example in national criminal systems.
Secondly, the beyond reasonable doubt standard of proof does not require the best theoretically possible chain of evidence. With respect to an alleged gap in the chain of evidence, the question should therefore not be whether there could be a better or “more complete” chain of evidence. This is arguably almost always the case. Rather, the question that the deciding body has to ask itself is whether the entirety of the evidence as it stands allows the deciding body, applying the principle of free evaluation of evidence, to regard the factual allegation as true with the required degree of conviction, i.e. beyond reasonable doubt.
In this context, the board agreed with T 832/22, Reasons 3.2.5, in that it seems expedient to focus on the term “reasonable” when applying the standard of proof of “beyond reasonable doubt”.
As stated in T 832/22, even if there is some remaining doubt, this standard of proof “can be met as long as the remaining doubt is reasonable, which can be understood as overall insubstantial in view of the entirety of the available evidence”. Beyond reasonable doubt thus refers to a standard for assessing a means of evidence which is both appropriate and practical, including for prior uses from real life.
In the present case, the board held that PPU 5 did take place. Not only there was an invoice, analytical data sheets established by a third party, but that the PPU 5 was picked up by the buyer (with a fork lift) directly from the manufacturer. Given that the two companies were located in the same town and on the same road, this is entirely conclusive.
The absence of a signed delivery note could thus not bring any reasonable doubt about the existence of the PPU.
Comments
The present decision is interesting in that it clarified that, even in presence of an apparent gap in the chain of evidence, it is enough for the deciding body to consider it reasonable, in order for a PPU as being established. The beyond reasonable doubt standard of proof does not require the best theoretically possible chain of evidence. The present decision does not contradict T 1138/20, commented in this present blog, but rather complements it.
When the higher of the two standards of proof is applied, it becomes irrelevant whether another standard of proof could apply, cf. T 832/22, also commented in this blog
Whether the higher or the lower standard of proof is used, it boils down to the conviction of the EPO’s deciding body. As the EPO is an independent organisation, it does not have to follow national jurisdictions when it comes to assessing facts.
The principle of free evaluation of evidence as set out in G 2/21 is also to be applied when discussing a PPU.
Comments
Leave a comment