Key points
- "The opposition division found that the prior use was sufficiently substantiated at least by the Neos 3 diaper production line. The technical features of the production line were disclosed in E4 and evidence of the sale [of the Neos 3 production line] to SCA in 2009 was proven by invoice E3. It however found that: [] the alleged prior use was not made publicly available by the sale to SCA"
- " According to established case law, the sale of an apparatus is, in the absence of any special circumstances limiting the freedom to divulge details thereof, sufficient to render the technical details of the apparatus available to the public. The sale by GDM of the Neos 3 production line to SCA in 2009, as evidenced by E3, has not been questioned. However, the Board finds, contrary to the opposition division, that there is no evidence of confidentiality, not even tacitly so, which restricted [the buyer] SCA from freely divulging details of the production line to any third party."
- " The Board concurs with the respondent and the opposition division that the 'beyond reasonable doubt' standard of proof is appropriate for the prior use to be seen as proven. "
- The Board reviews the findings of fact based on the evidence on file, in particular based on the transcripts of the witness hearings. The Board: " As regards SCA allegedly not communicating information regarding the Neos 3 production line to others, this cannot be concluded from the witness statements. On page 9/40, 2nd last paragraph, of his testimony, Mr Claessens states 'we do not kind of openly communicate issues of GDM to others, but it's not a secrecy agreement'. This further enforces that no confidentiality agreement was in place restricting SCA from divulging details of the Neos 3 production line to a third party."
- " The respondent's argument that a tacit obligation not to divulge details of Neos 3 must have existed due to the commercial and technical relationship that existed between GDM and SCA is held to be mere conjecture lacking foundation. According to the witness Mr Berg, indicated as commercially responsible for the acquisitions of Neos 2 and Neos 3 and for preparing, negotiating and signing the purchase contracts on SCA's behalf, there was no joint development project between GDM and SCA (see Mr Berg's testimony, questions and answers bridging pages 3-4/8 and 5-6/8, respectively). Irrespective of this, any possible existence of a commercial and technical relationship existing between GDM and SCA before the sale of the machines also does not allow a conclusion that a tacit obligation of confidentiality existed once the machines were sold to SCA and became its sole property. In fact, the sole secrecy agreements referred to by the witnesses (see Mr Berg's statement, page 4/8, line 6 onwards and page 7/8, last paragraph) relate to GDM being prohibited from divulging any detail of the SCA production facilities, rather than any restrictions being placed on SCA relating to the purchase of the Neos 3 production line. It is noteworthy that, despite a secrecy agreement restricting GDM from divulging details of the SCA facilities, no agreement is referred to by the witnesses, let alone has been filed, obliging SCA to similar secrecy with respect to the purchased Neos 3 production line. The lack of an agreement limiting SCA from divulging detail of Neos 3 is thus found by the Board to be proven beyond all reasonable doubt."
- As a comment, in the present case, the patentee does not seem to be SCA.
- The somewhat puzzling aspect is that disclosure from an assistant to the inventor is of course no prior art even if the inventor is not bound by secrecy.
EPO - T 1024/18
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/2022/05/t-102418-ii-public-prior-use.html
