T 0226/02 13-07-2004

1. Availability of the prior use to the public

1.1. The prior use is based on evidence that: a particular product was sold or offered for sale; that the properties of the product had not changed during the time between its production and the date of later testing; and that the results of the tests show that the product took away the novelty of claim 1.

1.2. The product was identified under the production number FN7875 which was based on Dorlastan V500 which was a spandex product produced by the appellant. The appellant has produced invoices to the effect that this product was sold as sectional beams to at least two independent companies (see document D3). The respondent has not particularly disputed this point. A sectional beam will, from its nature, have a very large number of free fibre ends. In the document D3 this number was given as 1,320 or 1,360. However, the product which was the subject of later tests in document D5 was a so-called cylindrical cheese (term used in literature of the appellant) or supply package (term used in the patent in suit). Such a package would have only one free end as shown by the fact that the claims state that the package was obtained directly from a dry spinning process and this also is consistent with the description of the patent.

There is thus no direct evidence that a supply package, i.e. having one free end, belonging to the production number FN7875 was sold or offered for sale. The appellant has argued that cylindrical cheeses would have been sold and that document EA-1 shows that Dorlastan was offered both as cylindrical cheeses and sectional beams for the product V500. Although document EA-1 makes a general statement about products offered for sale it naturally does not make any specific statement about the availability for sale of product number FN7875 as a cylindrical cheese. Also, the argument that such a production run would automatically be offered as a cylindrical cheese cannot be followed by the Board. It is quite possible that the whole of the production run FN7875 was sold as sectional beams. Even if all the production run was not sold as sectional beams it could also be that the quantity that was left over was too small to be offered for sale since wholesale sales are normally in reasonably large quantities. There is thus no concrete reason to conclude that the production run FN7875 undoubtedly was offered for sale as cylindrical cheeses. For this reason alone the allegation of prior use must fail.

1.3. The Board has also examined whether the prior use could have disclosed the features of claim 1. The production of FN7875 was in 1991. No date has been given for the test on the leftover package though logically it would have been performed in the period for opposition, i.e. between August 1998 and May 1999. The tests involved examining a leftover package to see if its properties were the same as those set out in claim 1. The question naturally arises as to whether the relevant properties of this package eight years later were representative of its properties at its production date. The appellant argued that the relevant properties change rapidly in the days just after production but thereafter do not change much. The appellant conceded that there were other non- relevant properties which did continue to change for a matter of months after the production. The respondent on the other hand argued that these other properties were in fact relevant and that they changed with time. According to document EA-1 (section 7) Dorlastan is not recommended to be used after six months from production. Document EA-1 also recommends certain storage conditions including temperature and humidity limits. The appellant argues that this has nothing to do with the properties relevant to the prior use and these were kept to. The appellant has not however timely produced any evidence to this effect.

Both parties have produced arguments regarding the effects of time on the properties of the supply packages, though the only evidence admitted into the proceedings is document EA-1. Where a technical question arises and both parties produce essentially non-verifiable arguments the Board has no choice but to rely on the only evidence admitted in the proceedings which in this case is document EA-1. This document as already mentioned above specifically indicates that there are changes with time and in dependence on storage conditions. The Board therefore concludes that even if a supply package from production run FN7875 were proven to have been sold the properties of these packages have not been shown to be the same in 1998/9 as they were in 1991. This conclusion is reached without considering the further question as to whether leftover packages may be considered as having the same properties as those packages that might have been sold.

1.4. The appellant has argued that in a case like the present they are put in the impossible situation of having to prove that something is the same now as it was in 1991. However, it was open to the appellant to attempt to obtain independent expert evidence as to the aging properties of this type of product. In the same manner was it was open to the respondent to obtain independent counter evidence on this point.

1.5. Even if the leftover packages were considered to have been available to the public and to be representative of the product at the date of a possible sale the validity of the test results must still be considered. The tests first of all depend upon the existence of leftover packages for which no evidence was timely offered. Independent testing for instance might have been able establish an approximate age for the leftover packages. No indication of the test procedures was timely given. All that was presented in due time was a statement that leftover packages existed and a table of results as to their properties. This is clearly insufficient to establish the probity of the test results. The present case corresponds to that of the often cited decision T 472/92. This Board supports that decision. The whole of the evidence, both as to the existence of sales, the existence of leftover packages and the properties of those packages lay in the hands of the appellant. The appellant should therefore have presented as much independent evidence as possible, i.e. documentary evidence of the existence of the leftover package, and tests of the age and properties of the leftover packages performed by an independent institute. The dangers of accepting evidence uncritically from a party are shown in the evidence that the appellant supplied which was based on a later reproduction of the earlier products. This evidence was subsequently withdrawn by the appellant when the appellant realised that the composition of the reproduced product did not correspond to the composition of the original. The Board does not imply that the appellant attempted to mislead since the subsequent voluntary withdrawal indicates the contrary, but this shows that even honest attempts may produce false results due to undetected errors.

1.6. The appellant thus failed to prove a sale, failed to prove that the properties of the later tested product were the same as those of the alleged sale and failed to show that the test results were valid. The alleged prior use is thus not proven and it does not belong to the prior art pursuant to Article 54(2) EPC.

2. Novelty

2.1. The appellant was unable to present any arguments as to novelty in the absence of the alleged prior use being considered part of the state of the art.

2.2. Therefore, the subject-matter of claims 1 and 3 of the main request is novel in the sense of Article 54 EPC.

3. Inventive step

3.1. The appellant was unable to present any arguments as to inventive step in the absence of the alleged prior use being considered part of the state of the art.

3.2. Therefore, the subject-matter of claims 1 and 3 of the main request involves an inventive step in the sense of Article 56 EPC.

4. Documents and requests to hear witness filed during the appeal proceedings

4.1. The appellant filed documents D12 to D14 along with the grounds of appeal. Furthermore, in a submission filed one month before the oral proceedings before the Board the appellant filed documents D15 to D22 and EA-1 to EA-3 and requested four witnesses to be heard. The respondent objected to the admission of these documents and the hearing of the witnesses. With respect to the admission of the documents the Board would note that at the beginning of the oral proceedings before the Board the appellant indicated his intention to pursue only the prior use identified under the production number FN7875.

4.2. Document D12 does not have a clear link to FN7875 and is just a freight document to send goods to another company. This company in fact belongs to the appellant. The document has no obvious relevance to the prior use of FN7875. Documents D13 and D14 concern another alleged prior use - FN7367 - which is no longer pursued by the appellant. These documents are thus also not relevant and hence not admitted.

Document D15 is a printout from the records of the appellant which is intended to show that the supply packages were spun direct from the dry-spinning process. The document merely lists the values of a number of parameters. Moreover, the document is an internal document of the appellant which could have been produced earlier in the proceedings. The production of the document at a late stage in the proceedings is not acceptable. The document is thus not admitted into the proceedings.

Document D16 is a dictionary extract which is intended to show the meaning of a term used in the patent in suit and thus is an indication of the scope of the claims of the patent in suit. The document raises no new issues and merely supports existing arguments. The Board therefore admits the document.

Documents D17 to D21 concern newly performed tests on a leftover package of FN7875. These documents raise new issues and could possibly lead to the respondent needing to carry out counter tests. This in turn could lead to a new oral proceedings and/or possibly a remittal to the first instance. The Board therefore considers that the documents may not be admitted at this late stage of the proceedings irrespective of their relevance.

Document D22 is an affidavit of an employee of the appellant. Although the document is intended to support the sale of a supply package under the production number FN7875 the signatory is only able to make general statements about what usually occurred and does not make specific statements concerning FN7875. The Board considers therefore that the document is not relevant and does not admit the document.

Document EA-1 is a product information brochure which is another version of the documents D7 and D10 which were filed with the opposition grounds, though EA-1 is dated nearer to the alleged prior use FN7875. The content of documents D7 and D10 has already been used by the respondent in his defence. Document EA-1 does not raise any new issues but rather ensures that both parties are dealing with more accurate product information when dealing with the alleged prior use FN7875. The Board therefore admits this document.

Documents EA-2 and EA-3 are internal documents of the appellant and concern the sales of a further type of supply package. The documents thus essentially concern a new alleged prior use. The same considerations therefore apply to this documents applied as to documents D15 and D17 to D21. The documents are therefore not admitted into the proceedings.

In conclusion, the Board admits only documents D16 and EA-1 into the proceedings.

4.3. The witnesses were offered to support the evidence filed in documents D15 and D17 to D21. Since this evidence is not admitted into the proceedings it is not necessary to hear the witnesses.

4.4. With respect the filing of documents D15 to D22 and EA-1 to EA-3 just one month before the oral proceedings the appellant explained that these were filed in response to the opinion of the Board, issued with the summons to the oral proceedings, that the existing evidence did not show what was sold. The Board would note that the provisional opinion of the Board does not require a response, nor is it intended to incite the filing of further evidence. The Board assumes when issuing the opinion that all available evidence has been filed and merely gives its provisional opinion to allow an orderly conduct of the oral proceedings. The argument of the appellant in this respect cannot be accepted

5. Decision of the Opposition Division regarding Rule 89 EPC

5.1. During opposition proceedings the respondent had requested a correction to the description of the patent as granted under Rule 88 EPC. At the oral proceeding before the Opposition Division the correction was apparently not discussed and the Chairman delivered the oral decision that the opposition was rejected. The tenor of the written decision, which was signed by the members of the Opposition Division, was that the opposition was rejected. The written grounds for the decision included a section at the end under the rubric "Decision". In this section it was indicated that the opposition was rejected and that the description of the patent was amended according to Rule 89 EPC.

The Board considers however that the Opposition Division acted ultra vires in taking a decision under Rule 89 EPC to correct a decision of the Examining Division. Only the body which took a decision is entitled to correct that decision to the form which the body had intended the decision should take. Thus, only the Examining Division was entitled to correct its own decision. Moreover, there is no reason to believe that the decision taken by the Examining Division did not correspond to what the Examining Division intended. The fact that the proprietor later discovered errors in the patent documents does not mean that the decision taken by the Examining Division was not the decision which it intended to take.

5.2. The Board considered the possibility of a correction under Rule 88 EPC as this is what the respondent originally requested. However, Article 102 EPC allows only three possibilities for the outcome of an opposition proceedings. Either the patent is revoked, the opposition is rejected, or the patent is maintained amended. In the present case only maintenance in amended form came into consideration in order to allow the correction. Following Rule 57a EPC amendments are only allowed if they are occasioned by a ground of opposition. This is not the case here so that the correction in the form of an amendment is not allowable. The Board is also aware that for a correction under Rule 88 EPC there must be for a mistake made in a document filed at the EPO. The filed document would therefore need to be identified. Since the granted patent is based on a text approved by the applicant it is not immediately apparent that a filed document containing an error can be identified and that the correction of the error in the document would lead to a change in the form of the granted patent. Because the present case one where the opposition is rejected this point does not need to be addressed.