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.
