Making available for test purposes 

A product made available for test purposes is to be treated as confidential. Sale of the product in a limited quantity is regarded as sale for test purposes, if the product is normally sold in large quantities (see T 221/91, T 267/91 and T 782/92).

In T 7/07 a third party had claimed inter alia that the main claims of the patent lacked novelty over a prior use, namely, the conduct of clinical trials with contraceptives containing the composition claimed in the patent. The participants had been informed of the ingredients but had not signed a confidentiality agreement, and not all unused drugs had been returned. According to the board, it appeared that, after having handed out the drugs, the patent proprietor effectively lost control over them as the participants in the clinical trials were in no way barred from disposing of the drugs as they wanted. In view of these circumstances, the board came to the conclusion that the handing out of the drugs to the participants rendered them publicly available. The board also concluded that it was possible for the skilled person to discover the composition or the internal structure of the product used in the clinical trials and to reproduce it without undue burden.

In T 945/09 the teaching according to claim 1 of the patent in suit was used by a patient while having "home parenteral nutrition" (HPN). The opposition division had concluded that all information concerning the use of taurolidine as a catheter lock available to the acting medical team, to the patent proprietor (supplier of taurolidine) and to the patient, was covered by an implicit obligation of confidentiality which stemmed from the specific circumstances of the case. The board held that there was no reason for the patient to treat that knowledge as a secret, because at that time the acting doctors simply tried to apply taurolidine of whatever provenance using a technique they derived freely and easily from the state of the art common to them at that time. The straightforward use of a compound as such was crucial for the assessment of novelty. Moreover, the action in the hospital of using the taurolidine-lock was not typical of a clinical or even an experimental approach because it was dictated by the instant necessity to help a patient in a very desperate situation and thus had not been planned systematically as a scientific experiment. Thus, the subject-matter did not meet the requirements of Art. 54 EPC.

In T 602/91 the opponents had conducted an experiment using the respondent’s (patent proprietor’s) invention before the priority date at which at least two employees of the appellant company had been present. That there had been no express confidentiality agreement was undisputed. Nor, in the board's view, had there been any tacit agreement either, as the two parties had not concluded a development agreement or entered into any other contractual relations that would indicate either of them having had any particular interest in a secrecy agreement. Furthermore, a single case of co-operation between a manufacturer and a potential end-user of the product was not sufficient to assume that a tacit confidentiality agreement had been entered into. Good relations alone were not enough for a tacit agreement to develop, particularly as in this case the appellants had a financial interest in disclosing the invention to the respondent’s competitors.

In case T 809/95 the granted patent was, inter alia, for a plastic bottle, the special features of which related to its foldability. One of the opponents alleged two cases of prior use. One of these had occurred in connection with a "market test" performed by a market research company on behalf of the third party to gauge the market for such bottles. The patent proprietor claimed that both prior uses had been subject to confidentiality rules.

As far as the prior use through market research was concerned, the board held that the very fact that the third party had chosen a test variant allowing the test participants to take the bottles home indicated that it attached no particular value to confidentiality in the patent sense. Nor was there any circumstantial obligation to maintain secrecy since the market research institute did not employ or have a business relationship with the test persons. Allowing the bottles to be taken home and used freely was rather evidence against any obligation to maintain confidentiality.

In T 1054/92 the opponent had alleged and proved that the claimed invention, an absorbent structure for diapers, had been tested in public tests carried out by several hundred members of the public at several places in the USA over several weeks. The appellant (patent proprietor) had admitted not being certain that the tests were confidential but he was of the opinion that it was up to the respondent to prove "without doubt" that there was no bar of confidentiality. In the absence of such proof, the board should find on the balance of probabilities that the tests were confidential. The board was convinced in the light of common experience that it was very unlikely that these tests had been kept confidential, particularly since some of the used diapers had not been returned to the appellant. The board confirmed, contrary to the opinion of the appellant, that the burden of proof for the existence of a secrecy agreement lay with the patent proprietor. Since he could not prove the existence of secrecy agreements with the participants in these tests, the board found that they were not confidential.

In T 1464/05 the board considered that an amount of 200 kg of the product, although clearly a bigger amount than the small sample initially delivered, would not have been sufficient for the production of optical cables on a commercial scale, but at the most for possibly carrying out tests in the production of optical cables and with the cables so obtained. It stated that the mere fact that a product has been delivered possibly for carrying out tests in what appears to be the result of an ordinary commercial transaction does not constitute by itself, in the absence of any other special circumstance or supporting evidence, a sufficient condition for concluding that the product was necessarily delivered under an implicit confidentiality agreement (see in this respect decisions T 602/91, T 264/99, T 913/01, T 407/03, and T 1510/06). In the particular circumstances of the present case, and with reference to the delivery involving 200 kg of the product, not only was there no indication that any express secrecy agreement existed between the two companies, but also no indication that any particular or special relationship existed between the two companies other than the ordinary relationship between a seller and a buyer company. As held in decision T 681/01, "there must be something in the circumstances that suggests that a confidential relation existed before a delivery which appears to be the result of an ordinary commercial transaction can be disregarded as not making the delivered goods available to a member of the public".

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