EP 2 867 245 B1 relates to the purification of iduronate-2-sulfatase
Brief outline of the case
The patent has been maintained by the OD according a MR.
The opponent, a firm of representatives, appealed the decision.
The board decided that the MR and AR3 lacked IS over D2/D2t=KR 10-1158673 a Korean patent document.
The translation of D2 was different from that of D1=WO 2012/177020, categorised as X,P in the SESR.
D2 and D1 have the same owner.
The patent was revoked.
The outcome of the case was depending on whether D2 was publicly available before the priority date of EP 2 867 245 B1.
The OD had considered that D2 was not publicly available.
The board considered D2 was publicly available.
The proprietor had requested remittal should D2 be considered publicly available.
The opponent disagreed and the board decided not to remit. The point at stake had been discussed all along the opposition proceedings.
Public availability of D2 – The opponent’s point of view
Public availability of D2 upon registration of the patent at the Korean Intellectual Property Office (KIPO) had been asserted from the outset of the opposition proceedings. Late filed documents were highly relevant and served as further evidence to confirm KIPO practice as set out in the KIPO Guidelines as in force in 2012.
In its decision, the OD had relied on the KIPO Guidelines which applied as of 2017, rather than on those in force of 2012. As the English translation of the relevant provisions differed, the OD’s reliance on the KIPO Guidelines of 2017 was flawed and demonstrated that the division did not give proper consideration to the correct legal position at the effective date.
The OD thus erred in not accepting D2, a published Korean patent, as state of the art.
The standard to be applied was that of a balance of probabilities because the information relating to patent document D2 was not evidence that had been available only to the appellant.
Public availability of D2 – The proprietor’s point of view
There was no proof beyond reasonable doubt that a member of the public had access to the content of document D2, nor was there evidence that the skilled person could have acquired knowledge or awareness of the existence of document D2.
The standard of “beyond reasonable doubt” had to be applied because the evidence regarding the publication of document D2 lay within the opponent’s sphere.
Evidence relied upon, including late filed documents, originated from Green Cross, owner of patent D2, to which the proprietor had no access.
Public availability of D2 – The boards decision
The OD held that the public availability of patent document D2 appeared to be a legal fiction and that members of the public could not have acquired knowledge or awareness of the existence of D2 until its date of publication.
The board was convinced that the disclosure of D2 had been made available to the public prior to the priority date of the patent.
The board did not agree with the proprietor’s view that all the evidence lay in the opponent’s sphere and, therefore, a stricter standard of proof should be applied, namely that of beyond reasonable doubt, and not the standard of a balance of probabilities.
For the board, there is indeed a certain relationship between the production of evidence and Green Cross Corporation, co-owner of D2. However, at issue was the asserted public availability of the disclosure D2 via the KIPO website.
There is no reason to believe that it was impossible for the proprietor to obtain information from KIPO which could serve as evidence in the proceedings before the EPO, nor had such an impossibility been put forward by it.
The further issue of how the situation would have to be assessed in light of the fact that the opponent in the current proceedings was, in fact, not Green Cross Corporation did not therefore have to be considered by the board.
The board considered that what matters is not whether it was more likely than not that the D2 had been made available to the public prior to the priority date. Rather, what matters is whether or not the board was convinced that the disclosure of D2 had indeed been made available before that date.
It was common ground that the KIPO allowed for the possibility of inspection of documents relating to patent applications filed with the KIPO.
The board accepted that, as pointed out by the proprietor, the versions of the KIPO Examination Guidelines, i.e. irrespective of whether they were applicable in the relevant period of 2012, indicate that not all registered patent applications are made available to the public.
The board considered it proven that D2 was not of a kind which was not “laid open or not published after registration”.
The KIPO confirmed that a third party who knew the patent number of D2, could inspect the application documents and obtain a copy thereof through the KIPO website from the point when the patent register of the patent in question was issued.
Such a confirmation could not have been provided by KIPO had D2 or the related application documents not been laid open or not published after registration. Moreover, the proprietor had also not provided any evidence for its assertion that the disclosure of D2 was not available, i.e. excluded from, public inspection.
The board did not accept the proprietor’s further reading of these passages of the KIPO Examination Guidelines to the effect that they would suggest that the act of making registered applications available might not occur immediately following registration.
For the board, the evidence provided showed that the patent register of D2 had been created on 19.06.2012. D2 is a published Korean patent which means that it had been allowed. Creation of the patent register took place after the applicant had paid the registration fee to the KIPO on receiving a Notice of Allowance for the application.
The period from the creation of the patent register on 19.06.2012 until 28.06.2012, the latter being the day prior to the priority date of the patent in suit, may be short. Nevertheless, the board was convinced that the disclosure of D2 could have been obtained by any member of the public prior to the priority date via the KIPO website.
Comments
As the opponent was not the proprietor of D2, requesting that the public availability had to be demonstrated beyond any reasonable doubt, i.e. up to the hilt, was not the proper criterion. Balance of probabilities was enough.
As D1=WO 2012/177020, was categorised as X,P in the SESR, it was clear that a document published before the priority date of the patent could become a serious threat for the patent at stake. Finding D2 was one of the options available.
What mattered here, is that D2 could have been obtained by any member of the public Whether a member of the pubic actually accessed the register is then irrelevant.
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