CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 309/22 – A public prior use needs not only to be substantiated but also to be proven

chat_bubble 0 comments access_time 5 minutes

The patent relates to a tray-sealing-machine.

Brief history of the case

For the OD, claim 1 as granted was lacking N over a Public Prior Use of the tray-sealing-machine CFS Palazzolo SPA STAR2HS. The OD considered the PPU substantiated and proven, even without hearing a witness offered by the opponent.

The patent was maintained in amended form according to AR2 and both proprietor and opponent appealed the decision of the OD.

The board considered the PPU substantiated but not proven.

The decision of the OD was hence set aside and the opposition rejected, so that the patent was maintained as granted.

The opponent’s submissions

The opponent submitted within the opposition period that two machines were manufactured and sold by CFS Palazzolo S.p.A. in 2002 (machine ‘135) and 2003 (machine ‘146) and described their technical characteristics.

The further circumstances and the date of the alleged prior uses, that they were serial products, were submitted after the expiry of the opposition period.  

The opponent argued that STAR2-HS machines were manufactured as serial products and as such were freely offered and sold on the market.

The manufacture of the machines prior to the filing date of the patent in suit was evident from the designations on the machines and from the company documents E14 to E17, as the name CFS Palazzolo S.p.A., which can be seen on the photos of the machines, had not been used since 2006.

That the STAR2-HS machines ‘145, ‘135 and ‘146, manufactured and sold by CFS Palazzolo S.p.A., were used at Kerry Foods is evident from the statements E13 and E18 of a witness.

Since this witness would not have been subject to the opponents’ control, he would not have been available for testifying before the OD. However, this did not reduce the value of his witness statements as evidence.

The proprietor’s position

According to the proprietor, the opponent’s submissions on the circumstances of the alleged prior public use were limited to the fact that the machines ‘135, ‘146 and ‘145 manufactured by CFS Palazzolo S.p.A. had reached Kerry Foods Ltd. in some unspecified manner at some unspecified time prior to the filing date of the patent in suit and had been used there.

Without knowledge of the circumstances of the transfer of the machines to Kerry Foods Ltd. and the circumstances of the operation of the machines at Kerry Foods Ltd. it could not be assessed whether, when and to what extent the machines had been made available to the public.

For the proprietor the PPU was neither substantiated nor proven.

The board’s decision

The board reminded that three criterion apply when assessing a PPU: when the PPU took place, what was the object of the PPU and how the PPU occurred.

Substantiation of the PPU

The information on the “when”, “what” and “how” of prior use is all that the patent proprietor and the OD need within the opposition period in order to understand the opponent’s submissions, and thus the only requirements for substantiating the PPU.

Everything else, i.e. whether the alleged facts are sufficiently proven or are sufficiently proven in the course of the opposition proceedings with the help of subsequently filed and admitted evidence, is a question of substantive merit.

For the board the PPU was thus properly substantiated, but not sufficiently proven.

As the PPU was not by the opponent himself, but by a third party, applying the criterion of balance of probabilities was correct. The board did not question the standard of proof applied by the OD.

The board was not convinced by the opponent’s argumentation, but followed the proprietor’s submission.

Circumstances of the alleged PPU

For the board, it was undisputed that the STAR2-HS machines were manufactured before the filing date of the patent in suit. However, no evidence was submitted regarding a specific sale of the machines from CFS Palazzolo S.p.A. to Kerry Foods Ltd.

The alleged operation of the machines at Kerry Foods Ltd. was also not proven.

Any reference to Kerry Foods Ltd. was exclusively established by witness statements E13 and E18.

Due to the decision of the OD not to take these statements into account, it was therefore not apparent that the alleged PPU were sufficiently proven.

The content of statements E13 and E18 was not taken into account in the appeal proceedings because the witness statements disputed by the proprietor could not be verified and no opportunity was given to convince oneself of the credibility of the witness.

The board was also not convinced that serial production can be assumed for only five machines specified in the contested decision. In the board’s view, there is insufficient evidence that the machines were freely offered and sold on the market as series products.

Object and date of the alleged prior use

Witness statements E13 and E18 confirmed that the machines ‘146, ‘135 and ‘145 had not been substantially modified since the filing date of the patent in suit and always had a gripper device with two gripper arms, each containing two tray grippers, in which the two tray grippers were each accommodated in a coupling device.

As admitted by the opponent itself, the pictures and videos of the machines allegedly used at Kerry Foods Ltd. were taken after the filing date of the patent in suit. There is also no indication of the date of origin of documents E19 to E23, so that they could have been created both before and after the filing date of the patent in suit.

Thus, it is not proven that the machines shown in the photos and videos were already in the condition shown in the photos and videos before the filing date of the patent in suit.

It is possible that the machines were converted by the operators themselves. It is also conceivable that the machines were subsequently converted using an add-on kit provided by the manufacturer or a third party.

In this case, several machines could even have been converted in the same way by different operators independently of each other. A conversion of the machines within a period of approximately 12 years (from the assumed manufacture of the machines to the filing date of the patent in suit) can neither be ruled out nor would this be unusual. That a conversion would be complicated and therefore unlikely is a mere, unconvincing assertion by the opponent.


The present decision reminds that it is not sufficient to allege the date, the object and the circumstances of a PPU. Those elements have to be verifiable.

In case of a PPU, witness statements can be brought in the written procedure, but without actually hearing witnesses it appears quasi impossible to prove a PPU.

The witness has to be heard by the OD, as with the valid RPBA hearing of witnesses by a board for the first time will remain a very rare occurrence.

It is reminded that a witness can only confirm facts or evidence submitted during the opposition period, cf. T 241/99, T 2010/08 or T 1100/07. The information to be given cannot have been gained by hearsay.

In the present case, the witness was not heard by the OD. As the OD based its decision on a PPU without hearing the witness, and actualy had disregarded the witness statements, some boards even concluded that the OD committed a SPV, e.g. T 1100/07 or T 273/16. Had the proprietor requested hearing of the witness, the OD would certainly have committed a SPV.

Nowadays a remittal in order to hear the witness, cf. T 448/07, is rather unlikely.

That hearing a witness complicates matters is certain, as the OD has to be enlarged by a legal member, cf. Guidelines E-IV, 1.6.1, and the OP is longer. But this are not reasons for not hearing a witness.  

When proving a PPU, hearing of an offered witness appears necessary and the proprietor contesting the PPU should in principle request the hearing of the offered witness.

If the witness does not reply to summons for hearing before the EPO, it could be heard in a court of its country of residence, if the latter is in a Contracting State of the EPC, cf. Art 117 and R 118, 120.

The opponent’s argument that the witness would not have been available for testifying before the OD appears thus without merit.

Share this post


Leave a comment

Leave a Reply

Your email address will not be published. Required fields are marked *