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Case Law of the Boards of Appeal

 
 
d)
Presenting the product in writing 

In T 541/92 a sub-contractor had given sketches of a device to its client. In the board's view this constituted an obligation to maintain secrecy. It was standard practice for clients and their subcontractors to keep their projects secret, and allegations to the contrary required convincing proof.

In T 1076/93 the opponents had, without there having been an explicit agreement to maintain secrecy, had offered an apparatus which caused the subject-matter of the invention to lack novelty and had provided drawings to a weapons manufacturer. The board held that the prior use did not cause lack of novelty, because a variety of circumstances pointed to there having been an obligation to maintain secrecy. According to the board, discretion was generally acknowledged to be the rule on the premises of such companies. The business contacts between the opponents and the weapons manufacturer were restricted to specific individuals. Furthermore, aside from the discretion commonly observed in this branch of industry, almost all the papers used by staff at the company in question bore warnings about the need for confidentiality. It had been demonstrated that this company did not as a matter of principle allow the details of quotations to be passed on to third parties.

In T 818/93 the relevant prior art document was a declaration made by the inventor before the USPTO, plus exhibits 1 and 4 mentioned therein. Several companies had been contacted in an (unsuccessful) attempt to interest them in developing and funding research into the intraluminal graft outlined in exhibit 1. Exhibit 4 had been sent to the inventor's superior, a professor at the University of Texas Health Science Center at San Antonio, after which discussions had been held with him and a research assistant at this university with a view to obtaining the necessary equipment for carrying out the research and fabrication and for testing the graft. In the board's judgment, all these steps and approaches had been taken within the context of business relationships which were necessary to bring the project to a successful conclusion. Such negotiations were confidential by nature, in view of the comparable interests of the parties involved, and implied a secrecy agreement. In the board's view and contrary to the respondent's assertion, a written agreement was not necessary to rule out any involvement of a third party so that, in the case at issue, implicit confidentiality had not been breached by the meetings and negotiations prior to the filing date of the contested patent.

In T 480/95 the document relied upon by the opposition division as a prepublication decisive for the evaluation of inventive step was a letter from the opponent to a customer written in connection with a contractual relationship between the two firms. In this letter the opponent gave advice as to the way in which a certain programmed memory solved specific processing problems. The board considered this letter to be a typical example of correspondence between contracting firms, which was confidential by its very nature.