3.4.4 Commercial relationships and interests

In the following cases, the boards found that there was an (implicit) obligation to maintain secrecy:

In T 1085/92 the board took the view that, where contractual relations and development agreements existed, a secrecy agreement could be assumed to exist. Such an agreement does not necessarily have to be a contract made in writing, as an implicit or implied agreement could also be taken into account (T 838/97, T 818/93). On implicit confidentiality obligations and their duration, see e.g. T 830/90 (OJ 1994, 713), T 201/13 and T 72/16). In T 2/09 the board took the view that, where a party's own interest in secrecy could be established, then the situation would be analogous to that of a non-disclosure agreement between the parties involved. In this particular case (test case on public availability of an e-mail transmitted via the internet) the board held that an internet service provider had a business interest of its own in keeping secret (i.e. not forward to third parties) the emails to which it had access.

In T 799/91 the opponents asserted that the subject-matter claimed had been in prior public use in that its manufacture had been "sub-contracted out" to a third company. According to the board the third company was not simply any third party because the opponents' decision to place an order was based on a relationship of trust. The board therefore saw no indication of there having been prior public use, nor could the claim have been substantiated by the testimony of any witness.

In T 1829/12 it was not in dispute that an explicit non-disclosure agreement had been entered into, but the appellant (opponent) contended that it had been of limited scope and had not covered the sensor unit at issue. The board rejected its contention as being at odds with normal business practice. No convincing reasons had been put forward as to why the sensor unit, of all things, should not have been covered by the explicit non-disclosure agreement.

In T 2170/12, in which the public availability of a project report was in dispute, the opponent had produced a statement by one of the report's authors that there had been no confidentiality obligation restricting the use or dissemination of any project information. The board, however, found that the report appeared to have been circulated only among people working on the project (which, the proprietor maintained, implied its confidentiality). It did not seem to have been sent to a wide circle and there was no specific evidence to support what the author had said in his statement. Considering also the short interval in question (less than four months), the board held that the report's public availability during this time had not been sufficiently proven and ultimately disregarded it as prior art for the purposes of examining inventive step.

In T 833/99, during invitations to tender, the municipal employees had been required to observe confidentiality. The appellant (opponent) said they might have breached that confidentiality, e.g. by informing repair workers of certain steps in the process, but did not back this up with firm facts such as dates, circumstances, etc., or with other evidence. Mere suppositions could not be entertained; they were not proof, and the onus was on the appellant to show that its allegations were well founded. Lastly, the board observed that there was no law to the effect that the confidentiality governing tender procedures ends when they do.

In T 2702/18 the board, considering what standard business practice would normally dictate, was convinced that a supplier and the patent proprietor as its customer had been bound by a relationship of trust of the kind typical in the sector and forbidding the supplier from disclosing the customer's trade secrets which came into its possession in the course of their co-operation to just any third party. The supplier had thus been obliged on principle to treat the patent proprietor's development results not intended for public consumption as confidential. However, that did not mean it had equally been obliged to maintain secrecy as regards what it knew, or learned through the co-operation, about devices its customer had already made publicly available in the past.

Finally, contrasting with the above, a particular example of the absence of an implied obligation of confidentiality in case T 1798/14 took the form of a witness's visit to a firm's premises. It was in dispute whether he had been subject to an obligation to maintain secrecy, something he had repeatedly denied in his testimony. The respondent (patent proprietor) argued that he might nonetheless have been under such an obligation without knowing it. The board observed that it was not normally possible to furnish positive proof of the non-existence of a fact (here, an obligation). However, the non-existence of an agreement could instead be proven by showing that those who ought to have been informed were unaware of it. The business relationship between the witness and the company in question concerned a technical field that was not related to the said site visit. The board concluded that there had been no tacitly agreed obligation.