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Case Law Summary T 131121 Burden of proof for prior use
Case law 28 jan 2025

The case T 1311/21 addresses the burden of proof for prior use in case access to the evidence is not clearcut

- - - This Case Law Summary continues in English - - - T 1311/21 concerned an appeal towards the decision of the OD to maintain EP 2950075 B1 in amended form. Both patentee and opponent appealed the decision. In EP 2950075 B1 a test apparatus to measure exhaust gasses of a car whilst driving (‘on-road running exhaust gas test apparatus’) was claimed. A manual of a similar apparatus (Semtech-DS) that allegedly was supplied to a customer together with that apparatus before the effective date was a point of discussion. This manual disclosed all features of claim 1, but the question was if there was sufficient proof on the public availability of the manual before the relevant date of the patent.

Case Law Summary T 1311/21


Background
In its Notice of Opposition, the opponent (O) filed an undated user manual of the Semtech-DS (E7), a dated article from a trade journal on a purchase of a Semtech-D device (E7a) and a declaration of the company Sensors, Inc. that produced the Semtech apparatus (E7b). In its preliminary opinion the Opposition Division (OD) found the evidence not persuasive on the public availability. 

Subsequently the O filed several additional documents (E7c – E7k). E7d was particularly relevant being another article from a trade journal that disclosed the delivery of a Semtech-DS device before the priority date (June 2006). In the end the OD was convinced, and the prior use was deemed to take away novelty of AR-2.


The Appeal
For prior use, the developed case law dictates that when the evidence lies in the sphere of the O in the sense that the P has barely any or no access, the “beyond reasonable doubt” criterium applies. When both parties have access to the evidence the “balance of probability” assessment is used (CLBA, Sections III.G.4.3.2 a and b).

Case Law Summary T 131121 Burden of proof for prior use

In Appeal the P brough forward that Sensors, Inc. had a business relationship with the O (which was not disputed), that the manual E7 could not be retrieved from the internet and pointed to the ‘tailor-made’ declaration from Sensors, Inc. that seemed to be designed by the O. For these reasons the P found that the evidence was within the sphere of the O and the “beyond reasonable doubt” criterium should apply. 

The Board weighed these arguments. On one side the Board found that “beyond reasonable doubt” did not fit because the evidence was at the control of a third party and not at the control of the O, but on the other hand the Board identified a disbalance in the access of manual E7, so the “balance of probability” did not suit neither. Still according to the Board, the P could have approached the purchasing party that is mentioned in E7d or could have approached Sensors, Inc. themselves. 

The Board continued with citing T1138/20 reason 1.2.1 and T 1634/17 which both explain that a Board is not bound to limiting to one of the options. What is decisive is that, in view of the evidence before the first instance department or the Board in an individual case, the deciding body is persuaded that a particular […] disclosure has taken place […] or not

The Board consequently decided that since the case was not clearcut they did not need to decide on which burden of proof to apply but they could follow their own conviction. 

The Board subsequently explained E7d disclosed the delivery of a Semtech-DS device before the priority date (June 2006) and deemed that such apparatus is commonly is delivered with a user manual (document E7). Although the version number of E7 suggests that E7 was issued 9 June 2006, the Board deemed that based on the number of days that are present in June it is more likely than not that the device was delivered including E7. Additionally, the Board deemed it highly likely that E7 was anyhow delivered to another purchaser (being not the purchaser of E7d) of the Semtech-DS device before the priority date. 

Consequently, the Board decided that E7 was publicly available before the priority date. 

Decision of the Board 
The Board found AR-2 not novel over E7. AR-3 was remitted to the Opposition Division.

Summary written by the NLO EPO Case Law Team.