Key points
- In this oppositio appeal, "the opponent submitted that, in view of the proprietors' position that antibody 20G7 [specified in the claim] performed better than antibody 24C5 [used in the closest prior art], the burden to proof this was with the proprietors"
- The Board: "The "legal burden of proof" is on the party who relies on a legal consequence arising from an alleged positive fact. Accordingly, the "legal burden of proof" is determined by the legal cases which each party presents. The "legal burden of proof" (unlike the "evidential burden of proof") does not shift (see decision T 301/95, OJ 1997, 519, point 6.2.3 of the Reasons). "
- The terms legal burden of proof and evidential burden of proof don't ring a bell with me.
- The explanation in T301/95: " 6.2.3 Under English law, a distinction is drawn between "legal" or "persuasive burden of proof" and "evidential burden of proof". The former rule usually places the burden of proof on the party making an allegation. This apportionment of the burden of proof usually remains the same throughout the proceedings. In the case of "evidential burden of proof", the apportionment may change continually in the course of the proceedings and be transferred from one party to another."
- T301/95 in fact undertakes a review of the law of evidence in Germany, England and France and is quite interesting, also on that it concludes that none of the national laws can be applied in proceedings before the EPO for the matter of straw man opponents (which were then not yet permitted).
- However, even after reading T31/95 and the present decision, I don't understand what the relevance of the evidential burden is. In particular, the present Board says that " If the party bearing the "legal burden of proof" fails to demonstrate to the required degree the fact(s) on which its legal case rests, the board has to decide against that party."
- From some USA websites, I understand the term 'evidential burden' is used by common law lawyers to identify the level of proof that is initially required in order to get permission to present a contested fact to the jury in a jury trial (for what could be the original source of the term "evidential burden", actually in UK law, N. Bridge, Modern Law Review 12(3) p.273-289 (1949) full pdf here, paragraph bridging p.276-277: " This burden sets up before the party who bears it a preliminary legal hurdle which must be surmounted before the jury shall be entitled to consider the question of fact in issue. This burden I propose to call the evidential burden of proof.")
- " There is no shift of the legal burden of proof in the appeal proceedings. Although an appellant must argue on appeal why the contested decision was wrong, this does not result in a shift of the legal burden of proof on the substance (see decisions T 1210/05, point 2.3 of the Reasons and T 1608/13, point 3.1 of the Reasons)."
- T210/05: " Before the opposition division it is the opponent who bears the burden of proof as regards demonstrating that the patent does not fulfil the requirements of the EPC. Appeal proceedings do not result in a shift in the burden of proof in the way suggested by the respondent [opponent] - that is towards a requirement that the appellant prove a negative [namely, that a certain poster was not presented]. It is clear that in the case where the opposition division has revoked a patent, the appellant must argue before the board why this decision was wrong"
- T 1608/13 r.3.1: " Referring to T 585/92 the respondent argued that in appeal, after the Opposition Division had revoked the patent [for insufficiency of disclosure based on an ill-defined parameter], the burden of proof was shifted to the appellant to prove that the decision was wrong. However, the primary aim of appeal proceedings is to review the decision under appeal on the basis of the submissions and requests of the parties. This clearly encompasses the review of the Opposition Division's reasoning, in particular the assessment of the respondent's objections considered in the decision. If the reasoning as such is found to be wrong, there cannot be any shift of the burden of proof on the substance. As regards the latter, it is established jurisprudence that a successful objection of lack of sufficiency presupposes that there are serious doubts substantiated by verifiable facts []. It is primarily the respondent's duty to provide such facts in support of its objections."
- Turning to the technical effect: " The legal burden of proof lies with the opponent to establish that the claimed invention lacks an inventive step. The opponent must therefore set forth the state of the art which makes the claimed invention obvious to the person skilled in the art. If, in support of an inventive step, a patent proprietor alleges that the claimed invention has advantageous properties or effects, then the legal burden of proof for the alleged improvement over the prior art rests upon them (see decision T 97/00, point 3.1.6 of the Reasons)."
- T97/00: The patentee/respondent asserts that " the problem to be solved consisted in providing a process for activating a catalyst having an increased activity, an improved stability and a higher selectivity to C5+ hydrocarbons, as described in the patent in suit, column 2, lines 23 to 31" ... " in the present case, the burden of proof for showing that the claimed method leads to the alleged and not supported advantageous effects mentioned in the patent in suit, rests upon the Respondent-Patentee. In the absence of any corroborating evidence that said advantageous effects are obtained, the allegation in the patent in suit of increased activity, improved stability and higher selectivity are unsubstantiated and, consequently, such alleged effects are not to be taken into account in assessing inventive step."
- Which leads us straight to G2/21 Plausibility
- After analysing the facts at hand: "On the basis of the evidence on file, the board cannot conclude that antibody 20G7 is generally superior to antibody 24C5 in detecting BNP(1-32) and proBNP(1-108)."
- Follows the entire reasoning on obviousness: " In the board's view, a person skilled in the art starting from the closest prior-art antibody 24C5 would have been able to provide alternative antibodies capable of binding to BNP(1-32) and proBNP(1-108) using routine methods. Under the case law of the boards of appeal in these circumstances, the claimed subject-matter, i.e. antibodies, is obvious (see e.g. decisions T 735/00, point 26 of the Reasons; T 187/04, point 11 of the Reasons; T 511/14, points 3 and 5 of the Reasons; T 605/14, points 23, 24 and 26 of the Reasons). Therefore, the subject-matter of claim 2 does not involve an inventive step (Article 56 EPC)."
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/04/t-191117-burden-of-proof-technical.html
