4.3.4 Public availability of prior art documents
With regard to the public availability of commercial brochures, some boards adopt the less strict standard of the "balance of probabilities" (see e.g. T 743/89 (brochure produced by the patentee) and T 804/05 (prospectus issued by a third party)). Concerning a commercial brochure (prospectus) of a product produced by the opponent, in T 1748/10 the board considered it more appropriate to assess public availability on "the balance of probabilities" citing T 743/89 and T 1140/09 and not the standard "up to the hilt" as alleged by the patentee, in view of the fact that the brochure originated from the opponent. In the board's view, although D1 originated from the opponent, it was distributed to the public. Therefore, both parties were able to access and adduce evidence relating to the availability of document D1. The board in T 1140/09 considered the "balance of probabilities" to be the proper standard of proof to be applied for the question of the public availability of document E3, a brochure that had been distributed by the appellant (opponent) to visitors at CeBIT and had therefore been made available to the public before the priority date. In the particular case, however, the evidence presented by the appellant was such that it also met the stricter standard of proof as proposed by the respondent. Given the importance of large industrial fairs such as CeBIT for doing business and the strong interest of the appellant in making its brochure as widely available as possible, the board found that the public availability of document E3 was proven beyond reasonable doubt.
In T 184/11 the board first had to decide whether the document was an advertising brochure or a product data sheet. It contained no detailed technical data, merely general technical information. After a detailed review of the case law on standards of proof and the public availability of advertising brochures, the board decided that nothing in the reasons given for the contested decision indicated that the opposition division, in assessing probability, had not critically and precisely evaluated the evidence before it.
In T 146/13 the proprietor maintained that it had not been proven beyond any doubt that an advertising brochure had been distributed before the patent's priority date. The board, citing settled case law on commercial brochures as prior art and in particular T 743/89 and T 804/05, held that enough time (two years) had elapsed between printing and the priority date to conclude that the brochure really had been made available to the public. Adding that in practice the whole point of printing advertising brochures was to attract the attention of potential clients, it therefore decided that the brochure was prior art within the meaning of Art. 54(2) EPC (cf. T 738/04, point 4.1.1 of the Reasons).
In T 743/89 it had been proved that a leaflet disclosing the invention had been printed seven months before the priority date, but it was uncertain when the leaflet had been distributed. Based on the balance of probabilities, the board concluded that the leaflet was available to the public before the priority date of the patent in suit and was, consequently, comprised in the state of the art. Although the date of distribution could no longer, i.e. 10 years on, be ascertained, it could reasonably be assumed that it had taken place within less than 7 months and had thus been completed well before the priority date of the patent in suit. The opposite assumption that the brochure had been kept confidential was not very plausible since it was in the patentee's own interest to ensure wide-spread distribution of the brochure in order to inform as many potential customers as possible of this latest development in a highly competitive field. Hence, the onus of proof was incumbent on the patentee who, incidentally, being the originator of the pamphlet, should be in the possession of the necessary information.
In T 2451/13 the board applied the standard "up to the hilt" as meaning beyond reasonable doubt concerning the publication date of a brochure (brochure originated from a subsidiary of the opponent – all evidence essentially in the hands of the opponent). See also T 1262/15 (instruction manual).
The board in T 1710/12 agreed that the rigorous standard of "up to the hilt" is typically applied in cases where a prior use is involved. However, in the case before it, catalogue E1 had not been provided in support of an alleged prior use, but as written evidence on its own. The board thus deemed it appropriate to judge the public availability of E1 using the "balance of probabilities" approach. Document E1 (catalogue published by a company not being a party) was considered prior art under Art. 54(2) EPC.
- T 0733/23
In T 733/23 the opposition division had concluded that there had been insufficient evidence to prove that the data sheets D2, D4, and D7 to D9 had been made available to the public before the filing date. Rather than concluding that, as a result of the data sheets not being considered state of the art under Art. 54 EPC, the subject-matter of the claims was novel, the opposition division decided not to admit them into the opposition proceedings. The board concluded that not admitting these data sheets, filed in due time, constituted a substantial procedural violation (see details as from point 4 of the Reasons including discussion on D19, an affidavit).
The board, in support of its decision, presented some key considerations on public availability of advertising brochures and data sheets, as well as the standard of proof to be applied. The board stated that when a document was clearly intended to be publicly distributed, as was the case with advertising or commercial brochures, the absence of a specific publication or distribution date, a situation quite common in this type of document, was not in itself sufficient to conclude that the document did not constitute prior art. As with any other type of evidence, the key question was not whether the exact date of publication could be determined, but whether it could be established that the relevant subject-matter was made available to the public before the priority or filing date.
Data sheets often represent an intermediate case between internal documents and advertising brochures. Where no publication date is present, the board held it should first be assessed whether the document was intended for public distribution. If so, additional sources must be examined to establish whether the relevant subject-matter was publicly accessible before the patent’s filing or priority date. Here, the opposition division had failed to provide a reasoned decision on public availability, giving no weight to the dates printed on their front pages.
As to the standard of proof, the present board concurred with the position in T 1138/20 that there is only one standard of proof: the deciding body must be convinced, based on the underlying circumstances.
According to the present board, this did not imply that all cases were to be treated identically, as in practice the degree of proof required to establish credibility (i.e. to persuade the board) might vary depending on the specific circumstances. In other words, it was not the standard of proof that adjusted with the circumstances, but rather the credibility of the arguments made by the different parties. For example, when the evidence was exclusively controlled by one party, any gaps in the relevant information might significantly undermine that party's credibility. Conversely, when the information was equally accessible to both parties but only one party submitted evidence, merely raising doubts might not be sufficient to challenge the credibility.
In the present case, the conclusions of the opposition division suggested that the standard of proof "up-to-the-hilt" was applied to determine the public availability of the data sheets. Even if the board agreed that different standards should be applied, this would not be justified in the case in hand, as the relevant information to prove the public availability of the data sheets was not within the exclusive sphere of the appellant (opponent). In this instance, the relevant information would more likely be within the sphere of the patentee. Therefore, there was no basis for applying the strict standard of "up-to-the-hilt" or for questioning the credibility of the appellant (opponent) solely on the grounds that some information was missing.
The patentee argued that, when in doubt, the patent should be upheld. The board disagreed. Fact-finding boiled down to a binary exercise: either something had been proven, or it had not. In addition, there was no presumption of patent validity in proceedings meant to re-assess the validity of this very patent.