T 0219/83 - Burden of proof / Benefit of doubt - #17

Citation rank: 17
No. of citations: 174

T 219/83 is concerned with issues of proof. In particular, T 219/83 looks at a situation where parties to opposition-appeal proceedings make contrary assertions, and the Board is unable to establish which party is right.

Claim 1 of the contested patent related to a process for the manufacture of a zeolite from silicon dioxide and metal oxides, characterized (i.a.) in that the crystallization is carried out in the absence of an alkali metal. Claim 4 related to zeolites produced by the process of claim 1.

Regarding the product-by-process claim 4, the proprietor asserted that at the time of filing the patent application, no methods were available to produce zeolites having as low an alkali content as obtained by the claimed process. The claimed product would thus be new. They drew attention to their own unsuccessful attempts to remove residual alkali from known zeolites with a higher alkali content by repeated ion exchange.

The opponents, on the other hand, stated the opposite: they asserted that available methods were able to produce zeolites of a low alkali content, as claimed. Although they disputed the contention that there was no way of removing the residual alkali they had not been able to indicate a specific method suited to this purpose, or even to suggest the bare outlines of such a method.

The Board noted that they themselves were unable to establish whether or not such methods existed. They stated in this regard:

"It is true that under Article 114(1) EPC the European Patent Office, in proceedings before it, examines the facts of its own motion and is not restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. But if the European Patent Office is unable to establish the facts of its own motion, it is the party whose argument rests on these alleged facts who loses thereby. This is the situation here. The two parties have made contrary assertions concerning the desired elimination of alkali. In such cases the ruling goes against the opponent as appellant if he is unable to substantiate an assertion which could disprove the existence of an inventive step. It was up to the opponents to name a method in the state of the art whereby it was possible prior to the filing date to prepare by other means zeolites free of alkali to the same degree as those in the patent in question. The opponents were unable to name any such method; nor is the Board aware of one. Accordingly, the opponents' assertion can only be treated as an unproven supposition which cannot counter the assumption that the granted European patent involves an inventive step." (point 12 of the reasons)

In other words, the burden of proof for the assertion that prior art methods were unable to produce zeolites with a low alkali content thus lay with the opponents. They did not provide the necessary proof, thus, the benefit of doubt had to be given to the patentee.

The patent was thus maintained (in slightly amended form).

Remark: I have no good explanation why the number of citations dropped significantly around 2007. At least Headnote I (see below) seems equally valid under the EPC1973 and today. The decision is also still cited in the Case Law Book (2016, chapter III.G.5.1.1).

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Headnote:

I. If the parties to opposition proceedings make contrary assertions which they cannot substantiate and the European Patent Office is unable to establish the facts of its own motion, the patent proprietor is given the benefit of the doubt.

2. After oral appeal proceedings in connection with an opposition, the parties must be informed and invited to state their observations concerning the maintenance of the European patent in the amended form within a period of one month in accordance with Rule 58(4) EPC only, if they cannot reasonably be expected to do so definitively during the oral proceedings.

The full text of the decision can be found here.

Quotes from decisions citing T 219/83 can be found here.

T 0156/84 - Ex officio examination - #64

Citation rank: 64
No. of citations: 78

T 156/84 dealt with the principle mentioned in Art. 114(1) EPC that the EPO examines the facts of the case "of its own motion" (ex officio examination), and its conflict with Art. 114(2) EPC allowing the EPO to disregard late-filed facts and evidence.

In the underlying opposition case, the opposition division (OD) had disregarded documents D4 and D5, solely because they were filed after expiry of the 9 months opposition period. The OD justified the non-admittance of the documents into the procedure by stating that the nine-month period was sufficiently long and the two citations had been publicly available for a long time, as a matter of fact since 1933 and 1978 respectively.

The Board found that this conduct was not proper, taking into account the principles expressed in Art. 114(1) EPC. The Board stated:

"The Board considers that the principle of examination by the Office of its own motion enshrined in Article 114(1) EPC takes precedence over the possibility of disregarding facts or evidence not submitted in due time provided for in Article 114(2) EPC. This is evident from the wording of both provisions. That of Article 114(1) EPC: "ermittelt" in the German text, "shall examine" in the English and "procède" in the French, expresses an obligation whereas Article 114(2) EPC implies a discretion - the German text choosing the words "braucht nicht zu berücksichtigen", the English text "may disregard" and the French "peut ne pas tenir compte". The wording alone thus makes it clear that the provision in paragraph 1 has priority over that in paragraph 2." (point 3.4 of the reasons)

This does not only apply to examination proceedings (which may be regarded as being "100% ex-officio") but also in inter partes opposition and appeal proceedings. The Board stated in this regard:

"Even in inter partes proceedings before the EPO, which is what opposition proceedings are, account must be taken not only of the interests of the parties involved; the EPO also has a duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid. This is the real reason for the introduction of the principle of examination by the Office of its own motion in Article 114(1) EPC " (point 3.5 of the reasons)

T 156/84 says that, in order to saveguard the interests of the public, an OD or Appeal Board cannot disregard late-filed documents for the sole reason that they are late filed. The OD and Boards have to examine objectively the relevance of the citation introduced late into the proceedings and have to communicate the results to the parties at least in its decision.

Since this was not done by the OD in the underlying case, the case was remitted to the OD for further examination, taking D4 and D5 into account.

Remark: T 156/84 is a rather early decision on the principle of ex officio examination. Nowadays, G 10/91 ("Examination of oppositions/appeals") should be referred to regarding the proper amount of ex officio examination in opposition and appeal proceedings at the EPO.

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Headnotes:

1. The principle of examination by the EPO of its own motion (Article 114(1) EPC) takes precedence over the possibility of disregarding facts or evidence not submitted in due time. This follows from the EPO's duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid.
2. The EPO has to examine the relevance of citations introduced late into the proceedings and has to communicate the results to the parties at least in its decision. No final decision on the opposition can be taken until such an examination has been performed.
3. Late-filed documents can be designated as not material by the EPO without having to give detailed reasons as it does in the case of citations referred to in due time.
4. Late-filed documents are not deemed not to have been submitted in due time simply because they have not been submitted during the opposition period; if careful preparation of the opposition proceedings would have revealed the late-filed documents earlier, it is the opponent's task to set out the circumstances that prevented him from mentioning the documents earlier.

The full text of the decision can be accessed here.

T 0328/87 - Admissibility of opposition based on public prior use - #78

Citation rank: 78
No. of citations: 63

T 328/87 is concerned with the admissibility oppositions, which entirely rely on an alleged public prior use (Art. 100(a)). It defines the minimum amount of information, which has to be provided within the 9 months opposition period for the opposition to be admissible.

T 328/87 relied partly on the EPO Guidelines (nowadays GL G-IV, 7.2) and stated that the facts and evidence mentioned in Rule 55(c) EPC1973 (now Rule 76(2)(c)) as an admissibility criterion need to contain at least:

1. the the date on which the alleged use occurred, i.e. whether there was any instance of use before the relevant date (prior use);
2. what has been used, in order to determine the degree of similarity between the object used and the subject-matter of the European patent; and
3. all the circumstances relating to the use, in order to determine whether and to what extent it was made available to the public, as for example the place of use and the form of use. [...]. 

T 0291/00 referred to this as the „when, what and how“ criteria of T 328/87. Once the opposition is admissible, further evidence can be added, if needed.

In the opposition case underlying T 328/87 the opponent failed to submit within the opposition period any supporting evidence for the alleged manufacture and marketing in France of a top-loading washing-machine. Specifically, it lacked "any indication of evidence, such as sales catalogues, delivery notes, names and addresses of witnesses, etc." Consequently, the opposition was found inadmissible by the Board.

T 328/87 added that once an opposition is held inadmissible, there is no room for application of the principle of ex officio examination (Art. 114(1)). The reason for this being that there is in fact no procedure pending before the EPO to which the principle of ex officio examination could be applied (point 4 of the reasons).

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Headnote:

1. When an opposition is based on grounds of prior use, the requirements of Rule 55(c) EPC are only fulfilled if the notice of opposition indicates, within the opposition period, all the facts which make it possible to determine the date of prior use, what has been used, and the circumstances relating to the alleged use. The notice of opposition must also indicate the evidence and arguments presented in support of the grounds of opposition. However, Rule 55(c) EPC does not stipulate that the said facts, evidence and arguments have to be placed on file during the opposition period.
2. When an opposition has been declared inadmissible, its substance cannot be examined, nor is it possible for the EPO to examine the facts of its own motion in accordance with Article 114(1) EPC.