According to Article 54 of the European Patent Convention, an invention is considered to be new if it does not form part of the state of the art. The state of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of a European patent application.
But at what point does a document leave the non-public domain and enter the public domain?
In case T 1050/12, an EPO Technical Board of Appeal was asked to decide on this point in an opposition by Innovacell Biotechnologie AG (IB) to a patent owned by the University of Pittsburgh (UP). The patent concerned skeletal muscle-derived muscle cells, compatible with the tissues of different individuals for use in the repair of smooth muscle. Such cells could be used to treat urinary stress incontinence.
UP's granted patent was opposed by IB on the ground of lack of novelty over several prior art documents. The most relevant document was an abstract of a presentation at a meeting, referred to as D3, which had two authors, both of whom were inventors named on the patent. Every feature of the claims of the patent was held by the Board to be disclosed in D3.
D3 was published in a supplement to the Journal of Urology. UP asserted that D3 had not been made available to the public and argued that the public might not have known of the existence of a supplement to the Journal of Urology since it had not been listed on the Journal's website. In response, IB provided evidence from libraries in Germany, the USA and the UK, which confirmed that copies of D3 were available to library users before the relevant date of the patent – the dates were corroborated by library stamps.
In an earlier case, T 834/09, the date on which a library document becomes available to the public was considered. IB relied upon the decision of T 834/09, since it was decided in this case that the receipt and date-stamping of an incoming document by a staff member of a public library makes the document available to the public. Therefore, date-stamping an incoming document in a public library is the point at which a document enters the public domain.
UP asserted that the decision of T 834/09 represented a significant change in the definition of the public, by making a librarian a member of the public. They argued that earlier decisions required evidence that the document was on a shelf or catalogued in order to be accessible to the public.
The Board decided that, regardless of whether or not a librarian is a member of the public, the evidence supplied by IB was enough to satisfy that D3 was made available to the general public before the relevant date. D3 was therefore held to be part of the prior art. As a result, the patent was found to lack novelty over D3 and was revoked.
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