BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.3.2 dated 9 February 1995 - T 585/92 - 3.3.2*
Composition of the board:
P. A. M. Lançon
I. A. Holliday
J. A. Stephens-Ofner
Patent proprietor/Appellant: Unilever PLC, et al
(1) Bayer AG
(2) Procter & Gamble E.T.C.
(3) Henkel Kommanditgesellschaft auf Aktien
Headword: Deodorant detergent/UNILEVER
Keyword: "Sufficiency - yes - in light of appellant's further experiments" - "Clarity and support - yes" - "Priority - in order" - "Novelty - yes" - "Inventive step - yes" - "Evident abuse in relation to applicant - early publication by Brazilian Patent Office not considered to be so"
I. Where a patent application is published early by a government agency as a result of an error, this is not of necessity an abuse in relation to the applicant within the meaning of Article 55(1)(a) EPC, however unfortunate and detrimental its consequences may turn out to be.
II. In order to determine whether there is an abuse within the meaning of Article 55(1)(a) EPC, the state of mind of the "abuser" is of importance.
Summary of facts and submissions
I. European patent No. 0 003 172 relating to the use of a deodorant detergent composition and a method for suppressing human body malodour was granted on the basis of fifteen claims contained in European patent application No. 79 300 039.9, filed on 10 January 1979 and claiming priority from British application 1286/78 filed on 12 January 1978.
II. Three oppositions were filed against the granted patent. Of the numerous documents cited during the opposition, the following remain relevant to the present decision:
GB-A-838 240 (3)
DE-A-2 433 703 (6)
DE-A-2 805 767 (15)
III. The opposition division revoked the patent whilst the claimed subject-matter was held to be both novel and inventive vis-à-vis the closest prior art as represented by documents (1) and (6); the opposition division considered the objection under Article 100(b) EPC to be well founded. ...
IV. The appellant lodged an appeal against the said decision. Oral proceedings took place on 9 February 1995.
V. With the grounds of appeal, the appellant submitted a new main request, together with five auxiliary requests. The appellant sought to file a sixth auxiliary request at the oral proceedings. The arguments of the appellant both during the written procedure and at the oral proceedings may be summarised as follows:
The appellant agreed in general with the findings of the opposition division in respect of novelty and inventive step. However, the appellant pointed out that the question as to whether the early publication of document (1) by the Brazilian Patent Office constituted an abuse in terms of Article 55(1)(a) EPC had not been decided at any point in the proceedings.
Document (1) was filed in Brazil on 14 July 1976 and originally claimed priority from several GB applications, the earliest having a filing date of 15 July 1975. Under Brazilian patent law, it would have been due for publication on 16 August 1977. However, on 31 December 1976, the applicant abandoned all the claimed priorities which should have delayed the publication for a further 12 months. Notwithstanding this abandonment of priority, the application was erroneously published on 16 August 1977, ie before the priority date of the patent in suit.
The respondents contested the appellant's arguments concerning the early publication of the Brazilian document (1). Although this related to a mistake on the part of the Brazilian Patent Office, the respondents did not consider such a mistake to be an "evident abuse" within the meaning of Article 55(1)(a) EPC.
VIII. The appellant requested that the contested decision be set aside and the patent maintained on the basis of the main requests filed on 3 August 1992 or on the basis of either one of auxiliary requests 1, 2 or 6 or 3 or 4 or 5 of which all but the third auxiliary request (labelled "Auxiliary Request 6") were filed on 3 August 1992.
The respondents requested that the appeal be dismissed.
Reasons for the decision
1. The appeal is admissible.
2. Amendments (main request)
3. Sufficiency (Article 83 EPC)
4. Clarity and support (Article 84 EPC)
5. Priority (Article 87 EPC)
6. Abuse (Article 55 EPC)
6.1 The question whether or not the terms "filing of the European patent application" in Article 55(1) EPC and "the date of filing the European patent application" in Article 89 EPC do in law have different meanings, as the rules of construing and interpreting statutes enjoins (see the Vienna Convention as discussed in G 5/83, OJ EPO 1985, 64), had been considered but deliberately left undecided in decision T 173/83, OJ EPO 1987, 465. The board nonetheless observes that the detailed legal reasoning set out in the above decision (see para. 5 of the "reasons") would lead to the conclusion, which the board in that case however did not find necessary to draw, that the terms do indeed bear a different meaning.
6.1.1 Whilst this board fully understands the point submitted on behalf of one of the opponents that, in the interests of harmonisation, a Swiss national courts decision, also arriving at the above conclusion, should automatically be followed by the EPO, it cannot accept the premiss that the harmonisation of patent laws should proceed by adjusting and adapting the EPC, even where it was ambiguous, to the random individual findings of the national courts of the contracting states.
6.2 However, in the present case the issue of non-prejudicial disclosure can be resolved by deciding whether the mistaken publication by the Brazilian Patent Office did in law amount to evident abuse under Article 55(1) EPC. In this connection, the respondents submitted that since the Brazilian Patent Office was an agency of a sovereign government, it as well as its government was completely unfettered in its actions in relation to patent applications made to the BPO. Thus, given that sovereign governments and their agencies were completely free to do as they pleased, there could be, a priori, "nothing reprehensible" in the mistaken publication. In answer to a question put to one of the respondents by the board, they submitted as a matter of law that all evident abuse under Article 55(1) EPC had to be reprehensible, and since in the instant case this could not apply, the Brazilian patent application did form part of the prior art.
6.3 In rebuttal the appellant submitted that the Brazilian Patent Office had to follow Brazilian law, and that its mistaken publication of the patent application breached that law and was therefore reprehensible. Although he did not state it expressly, this submission implicity acknowledged the truth of the proposition that all evident abuse under Article 55(1) EPC had to be reprehensible.
6.4 In the board's judgment even if the publication of the patent application had infringed Brazilian law, that in itself may or may not be tantamount to an evident abuse in relation to the applicant. All governments, as well as their agencies can infringe personal rights, including commercial rights of the kind here involved. However, not everything done in infringement of local laws, including Brazilian patent laws is of necessity an abuse in relation to applicants' rights. In other words, the infraction or the observance of local laws is not relevant to, let alone decisive to, the existence of an evident abuse in relation to the applicant's rights within the meaning of Article 55(1)(a) EPC. The reason for this is that the term "abuse" as used in Article 55 EPC is not the equivalent of either a mere breach or a clear infringement of the applicant's rights: the two terms are not coterminous. Whilst it may well be true that all abuse of an applicant's rights also involves a breach or infringement of his rights, the converse is not necessarily true. In the case of an abuse, as explained below, the state of mind of the "abuser" is of decisive importance.
6.5 The nature of that state of mind must either be engendered or at least be influenced by his personal and specific relationship with the applicant. Normally where unauthorised disclosure of information takes place, there exists a legally enforceable obligation of confidence between the giver and the recipient of the confidential information. This confidentiality may arise from the circumstances of the disclosure or, as is more often the case, be brought about by an express confidentiality or secrecy agreement. In both cases the recipient of the information would know or should know the likely commercial and legal consequences of any unauthorised disclosure. Such a disclosure, made either with actual intent to cause harm (here commercial damage), or with actual knowledge (cf. constructive knowledge) that some such harm would or could reasonably be expected to result from it, would amount to an abuse in relation to the owner of the information. Different criteria apply to a disclosure by a recipient of information who does not stand in any personal or specific contractual relationship to the discloser but merely owes to the public a general duty to prevent disclosure. Such a disclosure made by dint of mere inadvertence or a genuine mistake, however unfortunate and detrimental its results may turn out to be, is not tainted with the necessary amount of actual or constructive knowledge and therefore culpable inadvertence so as to turn it into an evident abuse within the terms of Article 55(1)(a) EPC.
6.6 In the present case, as confirmed by Dr Tong's declaration, the disclosure by the Brazilian Patent Office was a result of a "lamentable error", and lamentable errors or simple mistakes do not, as was said before, qualify as "abuse", let alone evident abuse, which is the standard of reprehendsibility laid down by Article 55(1)(a) EPC. For the above reasons, the board finds that the publication of the Brazilian application was not made in consequence of an evident abuse in relation to the applicant or his legal predecessor and that, accordingly, the application does form part of the state of the art for the purposes of Articles 54 and 56 EPC.
7. Problem and solution
9. Inventive step
10. Since the board has decided to allow the appellant's main request, it is no longer necessary to consider the auxiliary requests.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance with the order to maintain the patent on the basis of the main request with consequential amendment to the description if necessary.
* This is an abridged version of the decision. A copy of the full text in the language of proceedings may be obtained from the EPO Information Office in Munich on payment of a photocopying fee of DEM 1.30 per page.