The disclosure relates to a lime producing technology, and in particular, relates to a powder lime calcining system.
Brief outline of the case
The opponent appealed the rejection of the opposition.
The board confirmed the rejection of the opposition.
The case is interesting in that the board made clear that access to a site is not the prerequisite for a public prior use (PPU).
As CPA, the opponent relied on a PPU (prior use BAOCAL) of a quicklime production plant bought by the proprietor from the legal predecessor of the opponent. The opponent supported its allegations of PPU with a plurality of documents.
The case is interesting in that the board clarified some issues related to PPUs.
The opponent’s point of view
The BAOCAL plant had been made available to the public by means of a sale. The proprietor was the customer having bought and received the BAOCAL plant from the legal predecessor of the oponent and was thus in a position to provide evidence on any non-disclosure agreement (NDA) which might have prevented the public disclosure of the prior use BAOCAL. In the absence of this evidence, it had to be concluded that the prior use BAOCAL was rendered public by its sale to the proprietor.
The proprietor’s point of view
The BAOCAL plant had been located on a company site which was not accessible to the public.
The proprietor argued that a company site did not fall within the scope of the “public sphere”. Employees of the firm could not be considered as members of the public due to their contractual relationship with the proprietor..
Consequently, the prior use BAOCAL was not publicly available before the priority date and was not prior art within the meaning of Art 54(2).
The board’s decision
For the board, it was undisputed that a quicklime production plant was built on the premises of the proprietor before the priority date. The correspondence of the reference numbers (23361270 – 31067) and the project denomination (BAOCAL) satisfies the requirement for proving with a high degree of probability that what was built at the patent proprietor’s premises corresponds to the technical content of specific documents.
The bord held that access to the site was not crucial to the issue at stake.
According to well-established case law, a single sale is sufficient to render the article sold available to the public within the meaning of Art 54(2), provided that the buyer was not bound by an obligation to maintain secrecy, even if it is not proven that others also had knowledge of the relevant item. The board referred to Case Law of the Boards of Appeal, 10th edition, I.C.3.3.1) If the contracting parties had wanted to exclude the sale and delivery from public accessibility, they would have had to agree on a secrecy obligation.
In the present case, it was not shown that the parties to the contract were bound by any obligation to maintain secrecy. In particular, the proprietor has not alleged, and there is no evidence on file, that the sales contract comprised a NDA between the parties to the contract.
In this context it was observed that the agreement terminating the above-mentioned contract does not mention any obligation to keep the particulars of the BAOCAL plant secret in the future either – while several regulations and further obligations of the parties were agreed upon – after the contract had been explicitly terminated in 1993.
Consequently, the acts of selling and delivering the plant rendered it available to the public. The mere assertion of the proprietor that a production hall within which the calcining system is usually located is not open to the public is not sufficient to cast doubt on the public availability of the system sold from one company to the other. The fact that the proprietor later decided to file a patent application cannot have an impact on whether or not the system was made public by the sale.
The board also referred to T 2037/18,headnote 2, in which it was held that, on the one hand, the sale of an item has to be proven by the opponent, and on the other hand the possible binding of the buyer by a NDA must be presented and proven by the proprietor.
Consequently, in view of the available evidence, the board concluded that the BAOCAL plant was made publicly available before the priority date and thus forms part of the prior art according to Art 54(2).
Comments
The present decision reminds that a PPU does not imply the necessity for any “public” to actually have had access to the object of the PPU.
It is enough that the object of the PPU has been sold to a third party without a NDA.
It sounds straightforward and is a direct consequence of G 1/92, OJ 1993, 277.
Depending on the circumstances of a PPU, it is enough to show that a member of the public has had the possibility to have access to the object of a PPU.
If the object of a PPU can only be seen, then only its immediately visible features have been made publicly available.
If the object of a PPU has been sold to a third party without a NDA, then its full featurecs have been made publicly available.
However, there is one proviso, G 1/23, cf. T 0438/19, in which it appears important to decide whether it is required that the composition and internal structure of a product be fully analysable and identically reproducible, with or without undue burden, for said product to belong to the prior art under Art 54(2).
https://www.epo.org/en/boards-of-appeal/decisions/t190694eu1
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