The Opponent argued that public prior use was evident in view of an unconditional sale of 246 copies of the component to their customer, a car manufacturer. The OD would have erred in its decision that the car manufacturer could not be considered a member of the public and that the sale would therefore not form public prior use.
An object is considered available to the public if a member of the public not bound to confidentiality becomes aware of the object, by, for example, an unconditional sale of the object to the member of the public. According to T 462/91 and T 1416/10, the condition of public availability would be fulfilled by a single sale without confidentiality and the pure possibility of inspection by the public. Decisive would be the possibility to become aware of the object rather than proof of actually becoming aware. This applies to so-called unrestricted deliveries as a result of unconditional sales of goods. Likewise in T 1309/07, serial delivery of automotive parts to a car manufacturer was considered public prior use, and no implicitly agreed confidentiality agreement would have been assumed.
In the present case, the Appellant-Opponent argued an unconditional sale of a car component is shown. Key in the Opponent’s argumentation was that it was not a delivery for which secrecy must be assumed in the context of a co-development project. A non-disclosure agreement during the development phase is not disputed by the Opponent. However, this does not apply to the phase when the development has been completed and a serial delivery takes place. A witness had confirmed that the delivery was part of a serial production and not a sample in co-development. As a result the sale of the component should be considered public prior use.
The Patentee argued that according to the witness, the confidentiality agreement between the Opponent and the car manufacturer was in force until the car manufacturer uses the component in serial production and sells it to clients.
It would not be evident from the Opponent’s statements that the low number of 246 copies of the component would have been envisaged for immediate use in serial production by the car manufacturer. The delivery including the 246 copies would thus still have taken place under confidentiality and was not public since serial production and public availability of the car was not yet initiated. Case T 1309/07 cited by the Opponent would not be comparable, because in said case a public catalogue was available before the priority date of the contested patent and the considerably higher number of delivered products (17.520) would have indicated a serial delivery for serial production.
The Board noted that the appeal was merely directed to the OD’s assessment that the car manufacturer could not be considered a member of the public. The only question to decide would be whether the---undisputed---sale of 246 copies of the component constitutes a public sale with public accessibility to the components. According to established case law of the Board of Appeals, one sale would be enough if the buyer is not bound to confidentiality. A possibility of third parties to become aware of the sale rather than proof of a third party becoming aware is sufficient to prove public prior use.
The Board set out that when the receiver of supplying material is working on the development of a product, the receiver has a vital interest in keeping their own plans for serial or mass production secret. Therefore it would be common practice that suppliers delivering the supplying material are committed to secrecy. This point of view is in line with established case law: only the receiving party in a development project decides whether, how, and when to make the parts developed under secrecy available to the public. An unconditional sale only occurs when the buyer can be regarded as a member of the public.
The Board discriminated between a serial delivery by the Opponent and an assembly of the delivered components in serial production by the car manufacturer. The Board found that the Opponent’s delivery was a serial delivery in the sense that the delivered 246 copies were produced in a process designed for serial delivery. The remaining question would be whether the evidence presented by the Opponent would prove use of the delivered copies in serial production by the receiving party.
The Board was not convinced by the Opponent’s arguments because it has not been sufficiently proven that an ongoing confidentiality agreement can be excluded. It could be inferred from the witness testimony that the confidentiality agreement was valid until the component is used in serial production by the car manufacturer. However, the witness did not make a statement about actual usage in serial production by the car manufacturer, but would have merely stated the discontinuation of the obligation to confidentiality as soon as the delivered components are used in serial production by the car manufacturer.
Also the context of the delivery could not prove that the delivered 246 copies were meant for serial production by the car manufacturer. The delivery contained further components in small quantities, which overall does not suggest the delivery was meant for serial production.
According to the Board, also in case T 1309/07 the question of the presence of a duty of confidentiality had to be resolved whether with an unconditional sale the buyer would be considered a member of the public. The Board found that case was not similar to the present case though, because the evidence in that case comprised a delivery of more than 17.000 components that had been offered in a public catalogue. In the present case, no evidence would have been brought forward that would show the use of the component in serial production that could remove doubts on public availability on the receiving party’s side.
The Board concluded that the Opponent could not evidence an unconditional sale of the 246 copies, and therefore the decision of the OD was not considered erroneous.