3. Availability to the public

The decisive issue in T 72/16 was whether the alleged public prior use by the sale and delivery of products was sufficiently proven. In this case Aspen sold a product (48 pipe sections) to Technip. The board concurred with the patent proprietor that it was not a sale and delivery of a commercially available end product which had thus become publicly available. The evidence showed that it was rather a development product, a prototype supplied in the course of an ongoing collaboration programme. Hence, Technip could not be regarded as a mere customer and neither of the partners as a member of the public. According to the jurisprudence of the boards of appeal, such a relationship between two companies which contracted to develop and deliver prototypes and products for test purposes cannot be treated as equivalent to that between a dealer and a customer and in these cases an obligation to maintain secrecy applied. In accordance with the normal practice in those cases there was at least an implicit duty of confidentiality on both companies involved. Thus, the burden of proof was on the appellant (opponent) to establish that there was no confidentiality agreement. The witness’ suggestion that the NDA was asymmetric, i.e. only binding on Aspen but not on Technip appeared not to be probable and from experience rather contrary to the situation in comparable cooperation projects, and furthermore not supported by any further evidence. It was not surprising that the witness, an engineer, not an IP specialist, was not aware of all the confidentiality requirements binding the other party. The board came to the conclusion that Technip was not a mere customer. Rather, Aspen and Technip were engaged as partners in a product development project and their collaboration was governed by an at least implicit confidentiality agreement. None of the prior uses had been proven, so that none of them formed part of the prior art.

T 1833/14 dealt with the condition of reproducibility laid down in G 1/92 (OJ EPO 1993, 277). It could not be concluded that the skilled person was able to reproduce the product Rigidex®P450xHP60 without undue burden. In order to be part of the prior art pursuant to Art. 54(2) EPC, a public prior use must amount to an enabling disclosure (T 977/93, OJ EPO 2001, 84; T 370/02, T 2045/09, T 23/11 and T 301/94). It is generally known in the field of polymers that the nature of the catalyst system, the type of reacting system and the process conditions significantly affect the properties of the produced polymer. In the polymer field, in which products and compositions are often defined by means of parameters, the requirement of sufficiency of disclosure is analysed with particular care and the same criteria must apply to the reproducibility without undue burden of a product on the market. In order for the product to be state of the art, the question was whether or not the skilled person would have been in a position to prepare the product as such, i.e. a sample identical to Rigidex®P450xHP60 in all its properties (not only those specified in claim 1). This was however not shown by the appellant (opponent). On the contrary, the appellant stated that "what may be more difficult (if the catalyst used for the original product is not known) is obtaining the same mechanical properties as the Rigidex product".

In T 1409/16 the invention was a laundry composition. The appellant (opponent) alleged that the claimed composition lacked novelty inter alia because of the commercially available CMC product "Finnfix® BDA" used in the examples of documents D1 to D3. By fractionation of said Finnfix® BDA, the appellant had obtained a fraction F1 and it went on to argue that since claim 1 was formulated in an open manner ("comprising"), all the compositions of D1 to D3 containing Finnfix® BDA also comprised said fraction F1 and were, thus, novelty-destroying for the subject-matter of claim 1. The respondent (patent proprietor) alleged that the fact that Finnfix® BDA could be fractionated to obtain an artificially distributed sample of CMC falling within the ambit of claim 1 did not mean that such information had been made available to the public. The board regarded the fractionation of Finnfix® BDA as carried out by the appellant as a kind of reverse engineering based on hindsight and revealing a particular ("extrinsic" within the meaning of G 1/92, OJ EPO 1993, 277) property of the Finnfix® BDA. However, information revealed by following this procedure did not correspond to what could be considered to have been made available to the public by an analysis of the chemical composition of Finnfix® BDA within the meaning of G 1/92. Hence, the board concluded that none of D1 to D3 made available to the public a composition according to claim 1 as granted. See also chapter II.A.1. "Interpretation of ambiguous terms or confirmation of the text of a claim".

In T 1050/12 the question of availability to the public of meeting abstracts of presentations for a future conference published in a supplement to a regular volume of a scientific journal was disputed. There was corroborating evidence in the form of date-stamped copies for the dates of receipt and/or cataloguing, and the board had no reason to doubt the usual routines described by librarians in their declarations. On the contrary there was no evidence on file supporting the allegations of the respondent (patent proprietor) that the journal supplement was not to be disseminated freely. The board did not agree that the conclusions of T 834/09 contradicted the earlier jurisprudence and refused the respondent's request for referral to the Enlarged Board. The board considered that, regardless of whether or not the librarian is considered a member of the public (as was the issue in decision T 834/09), there was persuasive evidence that documents at issue were made available to the public before the priority date of the present patent.

Case T 2239/15 concerned the public availability of documents (D1/D2) produced during the drafting of standards documents in the framework of the MPEG standardisation processes. The examining division concluded that D1 and D2 formed part of the prior art. The board concurred with the view of the examining division that the subject-matter of claims 1, 18 and 19 was disclosed in both documents. The relevance of contents of D1 and D2 was not questioned but the applicant objected that both were confidential working documents which had been submitted to the MPEG working group by those MPEG members involved in the elaboration of a particular new standard. Various documents regarding the structure of the MPEG group, its working procedures and the conditions of accessibility to the documents it produced were submitted. The board stated that the question of the public availability of documents D1 and D2 was directly linked to the procedures of MPEG when elaborating new standards. The large amount of evidence available in the case in hand allowed for a deeper understanding of the structure and working procedures within MPEG, a Subcommittee of the joint ISO/IEC Technical Committee. The decision also described the kind of documents involved: draft documents ("input documents", also referred to as "m" documents), "output documents" (also referred to as "w" documents), as well as how MPEG committee members should treat documents. In the absence of an explicit confidentiality agreement, a bar of confidentiality could not be seen to have been in place in the case in hand. The working group was small enough to make the explicit signing of confidentiality agreements possible, if "absolute" confidentiality (to keep it strictly limited to this group of members present in the meetings) had been intended. MPEG did not take this route. In view of the collaborative nature of the development process and the consensus-building procedure inherent to MPEG, confidentiality could not be guaranteed. The appellant was not able to demonstrate that the MPEG system could guarantee, or even expect, confidentiality. On the contrary, all evidence pointed to a system designed to guarantee a certain "privacy" of its data while at the same time being sufficiently pragmatic and flexible to allow consultation with other parties in order for it satisfactorily to fulfil its mission (the general idea behind a standardisation body of trying to build a consensus around a standard by wide consultation with interested parties). As a result, D1 and D2 were publicly available at the filing date of the application and the subject-matter of claim 1 lacked novelty.