Zusammenfassung von Article 117 EPC für die Entscheidung T2463/22 vom 04.12.2024

In T 2463/22 the opposition division had held that the prior uses had not been proven beyond reasonable doubt (up to the hilt), in particular with regard to whether the products of the prior uses had actually been delivered. The parties before the board focused on which standard of proof had to be applied in view of G 2/21 and T 1138/20 and whether the applicable standard had been met. In the respondent-proprietor’s view, T 1138/20 was an isolated decision, not compatible with G 2/21. On the required standard of proof, the present board observed that G 2/21 recognised that different concepts as to the standard of proof had been developed in the case law. According to T 1138/20 only one standard should be applied, namely "the deciding body must be convinced, taking into account the circumstances of the case and the relevant evidence before it, that the alleged fact occurred". In the present board's view, under the principle of free evaluation of evidence, it was always decisive in the evaluation of evidence that the members of the deciding body were personally "convinced". Moreover, they had to always be convinced of whether, as stated in T 1138/20, "the alleged fact has occurred". The board stated this was true regardless of which standard of proof was applied. The standard of proof refers to the nature or degree of conviction that the members of the deciding body must have to be satisfied that an alleged fact occurred (see T 832/22). According to the board, and with reference to a UK House of Lords decision, two important aspects had to be stressed. Firstly, that the standard of proof is related to the required degree of conviction of the members of the deciding body. Secondly, that it is not related to what is evaluated by the deciding body. Hence, also when a lower standard of proof such as the balance of probabilities is applied, the deciding body must assess whether or not the alleged fact indeed occurred. In other words, also when such a standard of proof is applied, the question is not whether the alleged fact might have occurred with some probability. The board considered G 2/21 (points 31 and 45 of the Reasons) consistent with this understanding. The more specific question as to whether there was only a single standard of proof or more than one could be left unanswered according to the board. The board held that if the deciding body was convinced beyond reasonable doubt that an alleged fact had occurred, there was no need to decide how many standards of proof there were and which one was applicable (see T 832/22). The board then gave some consideration to the assessment of factual allegations using the beyond reasonable doubt standard of proof. The European Patent Organisation being an independent international organisation, the board stated the standard had an autonomous meaning within this autonomous legal order. Secondly the board agreed with T 832/22 that it seemed expedient to focus on the term "reasonable". The board then considered the prior uses, focusing especially on prior use relating to the sale of product 5 (sample of a powder mix from a specific lot number), the content of the sample and whether it was available to the public. In view of all the information (including invoices, affidavit, emails, test report, excerpt from database), which also involved evidence provided by a third party (the buyer), the board was convinced beyond reasonable doubt that product 5, with a specific lot number, was sold prior to the effective date of the patent. Since it had also been shown that product 5 disclosed all features of claim 1, lack of novelty prejudiced the maintenance of the patent as granted. Concerning the third auxiliary request, product 5 was suitable for use as closest prior art. The board referred to the reluctance sometimes in the case law to treat an object of a prior use as the closest prior art. Often, there was neither information on what the object did and what properties it had in the technical environment in which it was applied nor on how the process for its manufacture could be modified. These considerations indeed spoke against regarding a prior use as a suitable starting point for assessing inventive step. In the case in hand however, the skilled person was faced with a different situation. The board concluded that the third auxiliary request did not involve an inventive step. The decision of the opposition division was set aside and the patent revoked.