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Case law 7 Dec 2021

No implicit NDA on the part of the supplier in its relation with a customer

The Board discusses an alleged implicit non-disclosure agreement (NDA) between a supplier (third party) and its customer (patentee). The Opposition Division (OD) had previously concluded that there was a NDA, but the Board overrules this decision. In their view, the supplier did not have any interest in secrecy and would not have known from the facts they were provided with that there was information worth protecting. Moreover, the details that were supposedly under the NDA had been developed by the supplier and therefore the supplier would be under no obligation to keep the developed knowledge secret. The Board concludes that there is no NDA and remits the case to the OD for further prosecution

The invention relates to a construction machine with a drivable chassis such as a road paver or feeder. In opposition, the opponent had brought forward arguments regarding lack of novelty because of the alleged public prior use (with witness evidence) of the machine before the filing date. The OD had decided that the event was to be was classified as “not public” because of an implicit non-disclosure agreement.

The situation is summarized by the Board as follows (translated to English):

“At the time, the firm Dynapac GmbH had contacted the firm ACE Stoßdämpfer GmbH and asked for an offer for a hydraulic shock absorber. An ACE sales representative then visited Dynapac's production facilities on 20.4.2011 and found that the product requested by Dynapac could not be used as intended on the road paver manufactured by Dynapac.

Therefore, under the conditions specified by Dynapac, ACE developed a feasible solution for a damping agent in the form of at least one structural damper, which was to be used to attach the push rollers to the road paver manufactured by Dynapac.

In this context, the ACE sales representative and the development engineer at Dynapac, who was entrusted with the development of the connection of the push roller to the paver, exchanged various e-mails documenting the development process.”

The dispute is about the role of the ACE sales employee. The proprietor (Dynapac) considered that he was under an implicit confidentiality obligation, whereas the appellant (opponent) was of the opinion that the ACE sales representative was part of the public.

The Board considers that in principle in industry there is a trust relationship between suppliers and their customers. Such implicit confidentiality prohibits the supplier from passing on trade secrets of the customer to any third party. However, in the present case, ACE did not know that the knowledge was worthy of protection.

Claim 1 of the main request reads as follows:

“Baumaschine, nämlich Straßenfertiger oder Beschicker, mit einem antreibbaren Fahrwerk (12), mindestens einem auf dem Fahrwerk (12) angeordneten Vorratsbehälter (14) für Straßenbaumaterial und mit in Arbeitsfahrtrichtung (13) gesehen vor dem Vorratsbehälter (14) angeordneten Schubrollen (18), denen Dämpfungsmittel (22) zugeordnet sind, dadurch gekennzeichnet, dass die Dämpfungsmittel (22) jeweils mehrere hintereinanderliegende Strukturdämpfer (27, 28) aus im Wesentlichen Elastomer aufweisen."

“Construction machine, in particular a road paver or feeder, having a driveable chassis (12), at least one storage tank (14) arranged on the chassis (12) for road construction material, and having push rollers (18) which, as seen in the working direction of travel (13), are arranged upstream of the storage tank (14) and to which damping means (22) are assigned, characterized in that the damping means (22) each have several successive structural dampers (27, 28) that are substantially  made of elastomer.” (translated)

Dynapac had presented the road paver they developed to ACE, and in particular the fastening of the push rollers of this road paver via damping means as one of their current development projects. Nevertheless, this method was already used by Dynapac in practice and therefore was already known to the public and not worth of protection.

Dynapac had sold damping means with hydraulic shock absorbers and the characterizing feature of this invention, that the structural dampers where substantially made of elastomer, was developed at ACE. Therefore according to the Board, ACE was not obliged to Dynapac to maintain secrecy about what they had learnt during their visits.

The Board thus considers that:

“3.1.3 Die für ACE geltende Geheimhaltungsverpflichtung aus dem Handelsbrauch betreffend die fremden Betriebsgeheimnisse von Dynapac erstreckt sich daher nicht auf beanspruchte Merkmale der vorliegend geltend gemachten Erfindung. Diese waren vielmehr - soweit nicht bereits allgemein vorbekannt - eigenes Wissen von ACE.”

“3.1.3 The confidentiality obligation applicable to ACE under commercial usage with regard to Dynapac's external trade secrets therefore does not extend to claimed features of the invention asserted in the present case. Rather, these were - unless already generally known - ACE's own knowledge.” (translated)

The Board cited decision T830/90 and explained that an implicit NDA assumes that both parties have a corresponding will and interest for the subject matter to remain secret. In the present case, however, the Board cannot see any incentive for ACE to bind itself to any legal obligations regarding a non-disclosure agreement. From the viewpoint of ACE, no new product had been developed. ACE had tailored the structural damper to Dynapac's specifications using standardized catalog goods from ACE. For ACE there would be no interest in selling this product exclusively to Dynapac. Instead, it would be in the interest of ACE to try to sell the product to as many customers as possible.

In addition, Dynapac did not adapt the design of the paver to the damping means supplied by ACE. Instead ACE had to adapt its product to the installation dimensions and performance values specified by Dynapac. Accordingly, it can be assumed that the inventive step lies in the adaptation of the structural damper to the specifications made by Dynapac. Therefore, the board cannot see why ACE should have assumed that Dynapac had an interest in wanting to protect a possible joint development of the structural damper, since Dynapac only defined the problem and ACE provided the actual solution.

As such, the Board is of the opinion that it cannot be assumed that ACE implicitly wanted or had entered into an obligation of secrecy. It was in ACE's interest to be able to offer the product and its use as an alternative to the previously known damping means in the form of a hydraulic damper when mounting the thrust rollers of a road paver to third parties. In addition, ACE was not aware that Dynapac would have made developments going beyond the installation of the dampers that could have been affected.

There was also no further indication that there was a joint development by Dynapac and ACE in the field of vehicle construction that would lead to a joint interest of keeping the development confidential. The Board therefore concludes that the facts used by the OD to decide on the existence of an implicit NDA are not sufficient.

The Board concluded that the prior use was public and therefore should be considered in the assessment of inventive step. The case was remitted to the Opposition Division.

More about case T 2702/18

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