Key points
- The Board concludes, in the translated headnote, that a relationship of confidentiality between suppliers and customers in the vehicle industry is the be assumed as customary, which prohibits as a matter of commercial practice, suppliers from sharing with third parties any trade secrets of customers that they get access to in the framework of cooperation with these customers. However, assuming a more extensive tacit secrecy agreement based on the facts of the case assumes that both parties had a corresponding wish to be legally bound and that they implicitly express that the joint development would not be made public, as long as a common interest in secrecy existed (thereby following T830/90).
- I think a lot can be said about this headnote and the board divulging or promulgating this commercial practice, but that is perhaps something for the future.
- In the case at hand, the opposition was based on prior use. It seems* (from the decision of the Board) that the invention was made by the supplier and shared with the customer and that the opposed patent was granted from a patent application filed by the customer. The Board concludes that the supplier was not bound by secrecy to the customer and that, therefore, there was a public prior use.
- As a comment, I'm not sure if the Board's reasoning is conclusive. Typically, the inventor itself uses the invention prior to the filing of the patent (application e.g. building prototype, lab experiments) and in principle, an inventor is not bound by secrecy (let's assume the simple case of a self-employed inventor in his/her/their garage; mutatis mutandis for engineers and scientists working for a company). Typically these activities of the inventor itself do not constitute a novelty destroying public prior use (in my view). In the case at hand, the supplier (seemingly*) developed the invention and shared the inventive concept with the customer i.e. disclosed the invention to the prospective customer. As to whether that disclosure constitutes prior art, the question appears to be whether the customer was bound by a (tacit) secrecy agreement.
- * Note; I'm not opining on entitlement in any way; the marked wording tries to summarize para. 3.1.2 and 3.1.3 of the decision.
- "Die für ACE [=supplier] geltende Geheimhaltungsverpflichtung aus dem Handelsbrauch betreffend die fremden Betriebsgeheimnisse von Dynapac [=customer] erstreckt sich daher nicht auf beanspruchte Merkmale der vorliegend geltend gemachten Erfindung. Diese waren vielmehr... eigenes Wissen von ACE [ supplier]."
- Headnote 3 in translation is: "The assumption of an actual presumption that the partners in a joint further development in the field of vehicle construction, in case of doubt, want to undertake binding mutual secrecy up to the publication of the developed product, presupposes as connecting facts at least the determination of the awareness that it is a joint development of both partner acts, and that both sides will be interested in secrecy."
- As to whether the decision involves a review of facts: in translation: “ 3.3.1 Since the board does not question the facts established by the opposition division, but only the legal conclusions drawn from them, the limitation of the assessment of evidence, which is, according to the case-law [*] of the board, equivalent to that of discretionary decisions (as laid down by the Enlarged Board of Appeal in G 7/93, reasons no. 2.6), not decisive in the present case. The principles set out in decision T 1418/17 are therefore not relevant here and the delimitation from decision T 1604/16 does not need to be discussed in more detail. 3.3.2 In summary, in the present case it is not a question of reviewing the evidence assessment by the opposition division and, if necessary, replacing it with another evidence assessment carried out by the board, but rather of drawing the correct legal conclusions from the facts of prior use established by the evidence assessment. The facts ascertained by the opposition division in this respect were also not called into question by the parties involved in the appeal proceedings, so that a review of the assessment of the evidence does not appear to be necessary for this reason either.”
- As a comment, it is not clear to me if the above means that the point if submitted late in the appeal proceedings, could not have been held inadmissible under Article 114(2) EPC.
- [*] The Board does not cite any case law in particular, G7/93 r.2.6 is not about the assessment of evidence.
T 2702/18
https://www.epo.org/law-practice/case-law-appeals/recent/t182702du1.html
Entscheidungsgründe
Hauptantrag
1. Der Hauptantrag entspricht der Fassung des Streitpatents, die im Einspruchsverfahren als ,,Hilfsantrag 1" bezeichnet wurde und gemäß der angegriffenen Entscheidung der Einspruchsabteilung den Erfordernissen des EPÜ genügte.
Vorbenutzung
2. Die Beschwerdeführerin machte bereits im Einspruchsverfahren die folgende offenkundige Vorbenutzung geltend:
2.1 Die Firma Dynapac GmbH hatte sich seinerzeit an die Firma ACE Stoßdämpfer GmbH gewandt und um ein Angebot für einen hydraulischen Stoßdämpfer gebeten. Ein Vertriebsmitarbeiter von ACE besuchte daraufhin am 20.4.2011 die Produktionsstätten von Dynapac und stellte fest, dass das von Dynapac angefragte Produkt nicht wie vorgesehen an dem von Dynapac hergestellten Straßenfertiger verwendet werden kann.
source http://justpatentlaw.blogspot.com/2021/09/t-270218-prior-use-and-tacit-secrecy.html
