Key points
- “IV. The opponent disputed the novelty of the independent claims on the basis of an alleged public prior use. The anticipation asserted was the offering and selling, before the patent's priority date, of an MPD 600 partial discharge measuring system.
- V. In support, the opponent invoked documents O1 to O3, of which O1 is a user manual, O2 a brochure, and O3 a sales invoice. Both O1 and O2, allegedly, disclosed all features of the independent claims, as well as providing evidence of public prior use.
- VI. In addition, the opponent offered three witnesses (Messrs Steinecke, Daniel, and Platz) to verify the functionality of the MPD 600 measuring system.”
- The OD refused to hear the offered witnesses. The OD found the alleged public prior use to be proved on the basis of O1-O3 (manual, invoice) and found “found documents O1 and O2 to form part of the state of the art (point 3.7), but not to disclose all the features of the independent claims of the patent”, this turned out to be critical.
- The Board finds the decision of the OD to refuse the witness hearing to be substantial procedural violation.
- “The witnesses were offered to "confirm the functionality of the MPD 600 measuring system as described above" ... "Described above" referred to the immediately preceding text, on pages 3 to 5 of the notice of opposition, where the opponent elaborated on the characteristics of the MPD measuring instrument of O1 and O2, ... ”
- “The opponent was, therefore, adducing clear, sufficient, and relevant facts which, if verified by the witnesses' evidence, would have supported its allegation of public prior use.”
- “As the disclosures of documents O1 and O2 leave open whether these features were present in the instrument described, but the instrument was actually made and sold and might itself have disclosed them even though O1 and O2 did not, this was a matter which witness testimony could resolve.”
- “A final conclusion on inventive step also requires consideration of the inventive step attack starting from the alleged public prior use. For this reason too, the witnesses should be heard.”
- “In view of the above, it cannot be ruled out that hearing the witnesses could, alongside evaluating the documentary evidence, have led to a different assessment of novelty and inventive step and, thus, to a different outcome. The Board views this as a fundamental procedural violation that justifies the setting aside of the decision, in line with previous jurisprudence (see, for example, T 716/06, point 3, T 1363/14, point 2; and T 314/18, points 4 and 6).”
- The Board remits the case.
T 0246/17 -
Summary of Facts and Submissions
I. This appeal is by the opponent, against the decision of the Opposition Division to reject the opposition to the European Patent EP2545389.
II. The patent was opposed on the grounds of lack of novelty and lack of an inventive step.
III. The following documents were submitted as written evidence with the notice of opposition:
O1|OMICRON mtronix technology, MPD 600 User Manual, OMICRON electronics, 2009 |
O2|OMICRON mtronix technology, MPD 600 Partial Discharge Analysis System, OMICRON, April 2008|
O3|OMICRON electronics GmbH, Rechnung No. IN09-0972, 10 March 2009 |
source http://justpatentlaw.blogspot.com/2021/09/t-024617-od-should-have-heard-offered.html
