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Case law 24 mei 2023

Non-convincing public prior use due to an unclear specification of the circumstances | T0042/19

--- Deze samenvatting is onderdeel van de EPO Case Law nieuwsbrief en gaat verder in het Engels --- In T0042/19, the Board deals with an appeal against a Patent about an injection device that would allegedly lack novelty because of the public prior use of the so-called “GensuPen”. The Opponent/Appellant (O/A) argued that the Opposition Division (OD) had incorrectly concluded that the prior use was not sufficiently proven, allegedly using a too high standard of proof and an incorrect assessment of the facts. The Board dealt with the case by first discussing their role in reviewing evidence, and afterwards analyzing the details of the case. In the end, the Board agreed with the decision as set out by the OD and maintained the Patent as granted.


  1. A boards' power to review appealed decisions is not limited to points of law but extends to points of facts (in agreement with T1604/16).
  2. However, it is settled case law that a board is not obliged to take all the evidence anew and that parties do not have the right to have the taking of evidence repeated at their request before the board.
  3. The principle of free evaluation of evidence, meaning that there are no firm rules on the probative value of the various types of evidence but that the deciding body is entrusted with weighing up all the evidence and basing its decision on what it is then satisfied has been established, implies a degree of freedom comparable to the one referred to by the Enlarged Board of Appeal in decision G 7/93, Reasons 2.6.
  4. Thus, it is wise to similarly respect this freedom, especially when taking into account that a board, except when only reviewing documentary evidence, does not have the same first-hand impression of the probative value of a means of evidence as a department of first instance that has itself heard a witness or expert or inspected an object.
  5. Although the Board is not limited in its decision, it normally seems useful to apply the test set out in decision T1418/17, Reasons 1.3: Unless the law has been misapplied (e.g. application of the wrong standard of proof), a board of appeal should overrule a department of first instance's evaluation of evidence and replace it with its own only if it is apparent from that department's evaluation that it:
    (i) disregarded essential points,
    (ii) also considered irrelevant matters or
    (iii) violated the laws of thought, for instance in the form of logical errors and contradictions in its reasoning.
  6. The evaluation of evidence only refers to establishing whether an alleged fact has been proven to the satisfaction of the deciding body. The discretion-like freedom is restricted to this question and does not extend to the further question of how the established facts are to be interpreted and what the legal consequences are (see Reasons 3.2 to 3.6)


European patent No. 2846857 (Patent) relates to an injection device (claim 1), and a method of assembly of an injection device (claim 11). O/A had filed opposition against the Patent on the grounds of insufficiency of disclosure and lack of novelty and inventive step. In their argumentation, O/A addressed, among other attacks, the alleged public prior use of an insuline injection device, referred to as the “GensuPen” (D18).

Although some of the evidence related to this pen was late-filed, the OD had admitted all the supporting evidence pieces D18.1 to D18.14 into the Opposition Proceedings as being prima facie relevant. Nevertheless, the OD concluded that the alleged public prior use was not sufficiently proven and therefore dismissed the attack.

The Patent was maintained as granted during opposition.

The Appeal

O/A contested the decision by the OD and argued (amongst other reasons) that the public prior use of the GensuPen was sufficiently proven. According to O/A, the OD would have 1) incorrectly applied the higher “up to the hilt” standard of proof to arrive to the conclusion that the alleged prior use was not sufficiently proven; and 2) only focused on the information of single pieces of evidence taken in isolation without duly evaluating any possible indirect evidence resulting from the information which could be gathered from all the available pieces of evidence when considered in combination.

Analysis by the Board

Before addressing the details of the specific case, the Board commented on their role as a Board in reviewing the evaluation of evidence. A summary of reasons to overrule a department of first instance is provided in the catchwords of the decision, which have been cited above. 

The Board concluded that in the present case it was not needed to reevaluate the evidence or overrule the OD because of the following reasons.  

As a first argument, O/A had submitted that the lower standard of proof for proving the prior use applied, i.e., the balance of probabilities. The Board confirmed that this was indeed the case, but also found that the OD already had applied this standard. The OD had concluded that under this lower standard of proof, the public prior use was still not sufficiently proven.

According to the Board, the lack of a full and clear specification of the circumstances justified the conclusion of the OD that the public prior use, even under the lower standard of proof of the balance of probabilities, was not sufficiently proven

The Board further found that the OD had correctly concluded that pieces of evidence D18.1 to D18.9 could not convincingly support the alleged public prior use of an insulin injection pen according to the sample D18.13 because D18.1 to D18.9 were not clearly linked to the product. These pieces of evidence mentioned the name “GensuPen” prior to the filing date, without specifying the lot number or other details of the device. The Board therefore considered it to be correct that the assessment of the public prior use by the OD was done only on the basis of the remaining evidence D18.10 to D18.14.

Regarding D18.10-D18.14, the Board shared the doubts raised by the OD on the factual circumstances of the alleged public prior use. Not all the circumstances were indicated by the submitted evidence. In particular, the circumstances around a witness statement by Ms Simon (D18.11 and D18.12 (translation)) – stating that she had received a GensuPen free of charge after asking a nurse in the Medical Center where she was working – were considered to be unconvincing because the statement did not confirm that Ms Simon was a member of the public. According to the OD and Board, Ms Simon could for instance have been under a confidentiality obligation. Moreover, the declaration was written six years ago and failed to explain why the declaration was written and signed in the first place. A similar reasoning applied to D18.10, which included a witness statement by Mr Lubawy.

According to the Board, the lack of a full and clear specification of the circumstances justified the conclusion of the OD that the public prior use, even under the lower standard of proof of the balance of probabilities, was not sufficiently proven.

Regarding the second argument of O/A, i.e., the consideration of the pieces of evidence individually, rather than in combination, the Board was also not convinced.  O/A attempted to argue that the missing circumstances would follow from the other pieces of evidence, in particular a news article of D18.4 that would provide the missing circumstances of Ms Simon and Mr Lubawy being test-buyers. The Board essentially agreed with the assessment by the OD that the argumentation provided in support of this was not convincing.

The Board therefore confirmed the decision by the OD that the public prior use was not sufficiently proven during the first instance proceedings.  

Request to summon a new witness not admitted

With the grounds of appeal, O/A had offered a testimony of a new witness, Ms Nabrdalik, to fill the gaps objected to by the OD regarding the specification of circumstances. Ms Nabrdalik had worked at the medical center where Ms Simon obtained her GensuPen and could, according to O/A, confirm that the GensuPen had in fact been freely distributed by the personnel of the medical centre to the patients on request for many years.

The Respondent (R) requested that this request be dismissed for being late filed. O/A argued that it had not filed this request previously as it had been convinced that the evidence previously provided had been sufficient at least under the applicable lower standard of proof.

The Board considered the reasons that O/A provided for the late submissions not to be convincing. It had been clear to O/A throughout the first instance proceedings that the supplied evidence was possibly not sufficient. The additional witness statement and request for the summons of a witness therefore could and should have been provided already during the first instance proceedings before the OD. The Board therefore dismissed the request, resulting in their final conclusion that the alleged public prior use was not sufficiently proven.

Decision of the Board (of Appeal)

In addition to the alleged public prior use, the Board dealt with some other novelty and inventive step attacks as provided by O/A. However, the Board concurred with the decision of the OD that all claims were novel and inventive. The appeal was therefore dismissed and the Patent maintained as granted.  

Summary written by the NLO EPO Case Law Team

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