The EPO Boards of Appeal recently decided a case involving food
products for infants, where it considered that the requirement
"up to the hilt" in relation to prior art equated to
"beyond reasonable doubt" rather than "absolute
certainty".
We previously discussed decision T 1410/14 from a Technical
Board of Appeal at the European Patent Office (EPO), in which the
Board had to decide on the prior art effect of an alleged, but very
brief, public prior use: did the length of frequency of a public
disclosure affect its status as prior art?
In the recently issued decision T 2451/13, a different Technical
Board had to decide a related issue concerning prior art: whether a
document referred to as D16, and marked as copyright 2002, had been
made available to the public before 2006. Additionally, the Board
had to decide whether to admit D16 into the proceedings (ie whether
to allow arguments to be based on it), since D16 had been filed for
the first time at the appeal stage.
The patent in question related to food products suitable for
administration to an infant that serve the purpose of stimulating
the consumption of fruit and vegetables later in life – so
called sensoric imprinting. The patent had been opposed at the EPO
after grant, with the opposition proceedings at first instance
ending in revocation of the patent. The patent proprietor then
appealed.
At first instance, reliance had been made by the opponent on a
document, referred to as D2, which like the patent is concerned
with sensoric imprinting. It is clear that D2 was considered highly
relevant by the Opposition Division tasked with reaching the
appealed decision. However, the Opposition Division held that the
date of disclosure of D2 had not been proven adequately by the
opponent. In particular, it held that although D2 bore a copyright
date of 2005 – before the priority date of 2006 –, it
was held not to be proof of a disclosure in 2005, following the
logic of an earlier Technical Board of Appeal decision on this
point (T 1257/05).
It was when responding to the proprietor's appeal that the
opponent filed D16, arguing that this was in reaction to Opposition
Division's decision that D2 had not been proven to be prior
art. The proprietor argued that D16 should not be admitted, on the
basis that it led to new arguments, and because the proper way to
address the Opposition Division's decision that D2 was not
citable prior art was to file evidence rebutting this
finding.
The Technical Board disagreed, contending that D16 was not filed
to raise a new inventive step attack but, rather, to show that the
teaching of D2 was publicly available before the priority date of
the patent. It noted that the disclosure of D16 is very similar to
that of D2 but that the marked copyright date of D16 (2002) was
much earlier than the 2005 date for D2. Moreover, it was considered
that it was as appropriate to file evidence that the teaching in
D2, rather than D2 itself, was available to the public before the
priority date.
The proprietor argued, again with reference to T1257/05, that the
copyright date on D16 did not on its own substantiate its status as
prior art. Additionally, it argued that the applicable standard of
proof had to be the so-called "up to the hilt" standard.
This is a well-recognised standard of proof where evidence in
support of an alleged prior use lies outside the control of a
proprietor. The Board agreed with the proprietor insofar as the
proper standard of proof was to be up to the hilt, noting that
because D16 originated from a company (Gerber), which was now a
subsidiary of the opponent, all evidence as to its publication date
was essentially in the hands of the opponent.
Arguably the key point from this case is the Board's
consideration of what was required from the opponent in order to
demonstrate, up to the hilt, that D16 had indeed been made
available prior to the priority date in 2006. It considered and
commented on a number of earlier decisions from the Technical
Boards, including the seminal case T 472/92 in which the "up
to the hilt" standard was first referred to.
Although it noted that T 472/92 did not specify precisely the
conditions to be filled in order for evidence to be proven
according to this standard, the Board observed that, in T 472/92,
it is stated that "its conclusions were based on '... an
extremely high degree of certainty', which is thus clearly the
yardstick – rather than 'absolute certainty' –
for 'up-to-the hilt' proof". The Board also considered
other relevant cases in which the term "up to the hilt"
is essentially equated with "beyond reasonable
doubt".
Notwithstanding the argument based on T 1257/05 about the 2002
copyright date not substantiating D16's status as prior art,
the Board stated that, since D16 was addressed to parents, giving
them instructions on how to feed their infants, "it would be
contrary to life experience to assume that D16 was not published
but rather kept by Gerber in the drawer for about 4 years, i.e.
until at least (after) the priority date of the patent". It
found this view to be corroborated by a further document, a
published jabber advertisement from 2002 containing some material
common to D16. It concluded that it was "quite clearly beyond
reasonable doubt that D16 was published before the priority date of
the patent".
Although decisions of the EPO's Technical Boards of Appeal are
only binding in connection with the decision being appealed, the
Board noted for completeness that its finding of D16 as prior art
was not at variance worth T 1257/04. In that case, the issue was
whether showing a date "9/94" could be assumed to have
been printed within five months. As well as noting that the
four-year period within which D16 needed to have been made
available to the public to be relevant prior art was much longer,
it also pointed out that there were two other cases in which
publication was held to have taken place within seven and 18 months
of dates indicated on the respective documents.
Whilst the case (which is available on the EPO's website) is interesting for
other reasons, and thus worthy of study in full, the take-home
message is the practical approach taken, and advice given, by the
Board to the problem of proving evidence "up to the
hilt", this equates to "beyond reasonable doubt"
rather than "absolute certainty".
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.