EP 2 108 914 B1 relates to a wire-guided torpedo propulsion assembly.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted lacked N over D19=Excerpt of the file with archive signature BW 1/387667, cover page, documentation “Aktenprüfung” (Anlage 3), pages 2 to 7 and figures 1 to 7.
The AR were either not admissible or lacking IS over D19. The patent was revoked.
As such, the procedure is “standard”. What is not is the document used against the patent.
The proprietor’s point of view
In writing, the proprietor did not provide any arguments questioning the finding in OD’s decision according to which D19 was part of the state of the art according to Art 54(2). The board agreed with that finding.
At the OP before the board, the proprietor raised doubts that D19 belonged to the state of the art because it did not contain a sufficient disclosure. D19 discusses Huhn seals (Huhn is a Swedish manufacturer of mechanical seals).
The opponent’s point of view
The opponent argued that the torpedoes according to D19 using Huhn seals were used in test runs. The fact that the Huhn seals in D19 may not have been without problems did not mean that they were a non-enabled embodiment.
The board’s decision
The board agreed with the opponent. The fact that other seals performed better does not mean that the Huhn seals of D19 can be considered to be insufficiently disclosed to the extent that a torpedo propulsion unit using them cannot be considered to be part of the state of the art.
Moreover, according to the penultimate sentence on page 4 of D19, the seals of D19 could be brought to satisfactory operation after lapping the seal surfaces before use. This clearly shows that the disclosure of D19 teaches a skilled person everything required to put a torpedo using such seals into practice.
As D19 discloses all features of claim 1 of the patent as granted, the OD’s decision had to be set aside.
Comments
Declassifying documents to become prior art
The case is interesting in that the prior art used for showing a lack of N was classified for a long time. That devices and their tests relating to defence material, are classified is nothing surprising.
It is only after declassification that they become public.
The German Federal archive most probably keep much more of such gems. No wonder that the opponent filed them after the end of the opposition period.
It should not be forgotten that in the past, US patents were only published after grant. I remember a US patent filed in the 30ies of the 20th century. It was published in the 70ies of the 20th century. No wonder as it related to cryptography, and by then the device was manifestly obsolete.
As far as I know, France and Italy are two countries not allowing a first filing at the EPO. The applicant has to file first at the national patent office, so the application can be vetted by the Ministry of Defence. It might therefore remain confidential, cf. Art 75 and Art 77 and never become a European patent application.
Failure to do so, may lead to criminal prosecution. Claiming priority from a declassified application is not a problem.
In lots patent offices, some staff members have a security clearance in order to deal with such sensitive applications.
Enablement
Prior art can only be considered as such if it is enabled, e.g. T 1988/14 or T 2260/16. The case is also interesting as it does not link enablement to a perfect working of the prior art device.
This is the counterpart of the fact that an invention is not immediately regarded as incapable of being performed on account of a reasonable degree of difficulty experienced in its performance, for example “teething troubles”, cf. GL F-III, 5.3.
The original problems with the Huhn seals in D 19 can be considered “teething troubles”.
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