Claim 1 of the Patent specified a mouse genome comprising a modification that eliminates a certain function (endogenous ADAM6 function). Document D11, filed with the notice of opposition, corresponded to slides of a presentation given by Dr. Murphy. The OD’s interpretation of D11 was referred to as D11’.
The Patentee argued that a presentation was an ephemeral event, which is why D11 could not be treated as a printed publication. For example, a listener to the presentation did not have time to review slides or to revisit them as needed. Therefore, it was incorrect to consider that the entire content of the presentation had entered into the public domain.
The crucial point, according to the Patentee, was not what information was presented, but what information was taken away by the audience. According to case law, this had to be shown by contemporaneous evidence from members of the audience.
The Patentee argued that the evidence on file was neither contemporaneous to Dr. Murphy’s presentation nor from members of the audience. The evidence on file contained notes of a professor and a witness testimony, none of which satisfied the criteria established by case law, according to the Patentee. By not following the established case law, the OD allegedly disregarded the principle of “beyond reasonable doubt”.
The Patentee held that Dr. Murphy’s presentation was primarily about laboratory techniques, not about actual methods or experiments. The focus was on general techniques and there was no evidence that the few slides that are concretely relating to ADAM6 were given any prominence during the presentation. On the contrary, the Patentee found that the evidence rather suggested that members of the audience took away different information than the claimed subject-matter.
The Patentee argued that information contained in D11’ was not contained in D11 and concluded that the creating of evidence D11’ by the OD was inadmissible and a substantial procedural violation.
The Opponent-Appellant [OA] argued that decision T 1212/97 did not set an absolute standard of proof for ephemeral disclosures but rather stated that each disclosure had to be judged on a case-by-case analysis.
In the cases underlying decisions T 1212/97 and T 2003/08, the respective presentations were only oral without showing any slides to the audience, or the lecturer had only a vague recollection of which slides where shown to the audience.
In contrast, in the present case, all slides of D11 were shown to the audience during Dr. Murphy’s presentation. Moreover, Dr. Murphy acknowledged so.
Consequently, the OA opined that whilst in the cases underlying T 1212/97 and T 2003/08, there was considerable uncertainty regarding what information was shown to the audience, there was no uncertainty about what information was shown during Dr. Murphy’s presentation. Namely, all slides of D11.
Moreover, the audience was interested in and able to understand the presentation, as Dr. Murphy’s presentation was given in a workshop for lab people. Thus, the audience had a high level of skill and was highly interested, according to the OA.
OA also found that several declarations confirmed that all slides in D11 were shown during the presentation. Said declarations were based on recollections from several attendees who had not been shown the slides of D11 after the presentation. Therefore, according to the OA, the declarations could be seen as contemporaneous to Dr. Murphy’s presentation. The declarations on file and a further testimony confirmed that the audience learned about the claimed subject-matter from the presentation.
The Board found there was sufficient proof to conclude Dr. Murphy’s presentation indeed took place. However, the presentation was only held orally and showing the slides, but neither hard copies nor electronic copies of the slides had been distributed to the audience.
Both decisions T 1212/97 and T 2003/08 acknowledged that “the amount of evidence necessary to establish the content of an oral presentation beyond reasonable doubt is to be judged on a case-to-case basis, i.e. it depends on the quality of the evidence in each case" (cf. T 2003/08, point 38 of the Reasons; T 1212/97, point 4 of the Reasons).
According to the present Board, there was no need to discuss which standard of proof to apply. The standard or proof should depend on the context, and the Board opined “proof beyond reasonable doubt” to be the right yardstick.
Furthermore, there was no need to discuss whether the reference to contemporary written notes by at least two members of the audience was compatible with the principle of free evaluation of evidence.
The Board found for the present case the OD’s conclusions cannot be followed:
Slides 23 to 26 of Dr. Murphy’s presentation were the relevant slides as they related to the claimed subject-matter. Although Dr. Murphy indicated the fact that all slides were shown to the audience, the OD considered this fact to be only “very likely” but not “finally proven beyond reasonable doubt”. The Board commented: “Be that as it may, this evidence is from the lecturer himself and thus, may by itself not be sufficient to proof that the relevant slides were indeed shown.”
The presentation took less than an hour in which the 58 slides of D11 were shown, to the best of Dr. Murphy’s recollection. The Board cited T 1212/97, that the “manner or speed of presentation may affect the comprehensibility of a lecture” (cf. T 1212/97, point 4 of the Reasons), that the amount of material/information covered by the lecture may be another factor to affect said comprehensibility, and that therefore "it is the wrong approach to try and answer successive factual questions such as whether a slide was shown at or not, and then what the audience would understand from it. The board is concerned with the information content made available to the public" (cf. T 1212/97, point 7 of the Reasons).
The Board agreed with T 1212/97. The relevant question was what was actually conveyed to the audience and what the audience took away from Dr. Murphy’s presentation, and not what was shown to the audience.
While a written note from a member of the audience may be important and decisive, none of the declarations on file were contemporary written notes taken at Dr. Murphy’s presentation. No such contemporary written note had actually ever been produced as evidence.
Nonetheless, the OD took “"into account the amount and quality of all evidence produced, particularly the reliability of the witness recollections and the high relevance of D11" and concluded that the information content referred to as D11' was made available by Dr. Murphy's presentation.
The Board disagreed with the OD. The Board found it not necessary to assess the amount or quality of the evidence brought forward or the reliability of witness recollections. While such evidence may be used to support content of a contemporary written note, none of such evidence might be as reliable as a contemporary note.
The Board highlighted that none of the evidence were documents contemporary to Dr. Murphy’s presentation. Instead, all of the evidence related to documents produced after conversations, discussions, and meetings, that all took place well after Dr. Murphy’s presentation.
The Board did not doubt that the audience in the present case---PhD students, post-doctoral researchers, professors leading research groups---was a group of skilled persons in the art. The Board also did not doubt that discussions on the presentation took place among the group of skilled persons immediately after this presentation, in view of the evidenced interest in Dr. Murphy’s presentation.
However, both the fact that the discussions took place only after the presentation and that the discussions took place before declarations related thereto were produced, should be taken into account.
The OD had not done so. So, the Board disagreed with the OD’s conclusion that the relevant information content was indeed made available during Dr. Murphy’s presentation. As a consequence, D11 did not form part of the prior art, and no information could be derived therefrom. Especially, no “information content” that was “proven beyond reasonable doubt” could be derived therefrom. Therefore, also the so-called document D11’ did not form part of the prior art.
The Board found that there was no reason for a referral. The case law referred to by the parties, T 1212/07 and T 2003/08, was not divergent and did not provide opposite guidance. Instead, both decisions put emphasis on the relevant of contemporary notes takes by at least a member of the audience during a presentation. There was no need for the present Board to take a general stand on the value of contemporary notes and on the required standard of proof.
The Board set aside the decision under appeal and the opposition was rejected.
Summary written by the NLO EPO Case Law Team