T 0173/83 (Antioxydant) 01-07-1985

2. The department of first instance revoked the patent, concluding essentially that, in the light of the information disclosed by document (3), it was obvious to the person skilled in the art how to overcome the difficulties encountered in the process as described in (1) by using the antioxidant described in document (2).

3. To assess inventive step on the basis of these three documents it is necessary to ascertain that these belong to the state of the art. The appellants contested the prejudicial nature of document (3) by virtue of Article 55(1)(a) EPC, since this disclosure was made on 7 November 1977, i.e. less than six months prior to filing of the French application whose priority was claimed, and resulted directly from an evident abuse in relation to the applicant (see statement of grounds II(b) to (e)). In the statement of grounds the appellants refer to business relations which they had carried on with Göbel und Pfrengle since 22 December 1975 for the final development of the invention. They consider that the fact that Göbel und Pfrengle sent a technical information sheet (the Annex to document (3)) to Kabel- und Lackdrahtfabriken GmbH (opponent I) on 7 November 1977 without having asked for the appellants' consent or even telling them, when they had for three years had confidential relations with them under a tacit understanding of preserving secrecy, constitutes an evident abuse in relation to them within the meaning of Article 55(1)(a) EPC (see statement of grounds, II (d)). The question of abuse was discussed by the parties from the very beginning of the opposition procedure. A negative ruling on this point was given by the Opposition Division in their Decision of 16 August 1983, on the grounds that "the solution to the problem did not come from the proprietor". ... Having reconsidered the circumstances and the content of the contested disclosure, the Board notes as follows:

4. The Annex to document (3) is in the form of a technical information bulletin for conventional advertising use, since it is merely a data sheet intended for the information of Göbel & Pfrengle's clients. The purpose of this document implies that is has been made available to the public and there is nothing to lead one to suppose that this document could have been intended solely for internal use. On the contrary, the fact that it was sent to Kabel- und Lackdrahtfabriken on 7 November 1977 proves the public character of this notice and establishes a date of disclosure. ...

5. Document (3) could be excluded from the state of the art if it involved a non-prejudicial disclosure under Article 55 EPC. According to paragraph (1) of this Article, including subparagraph (a), "for the application of Article 54 a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequence of an evident abuse in relation to the applicant or his legal predecessor". The Board therefore asked itself whether the disclosure of document (3) had occurred in the period provided for by Article 55(1) EPC. In fact, this disclosure did not occur later than six months prior to filing of the application, but merely later than six months prior to the priority claimed. The problem of the possible accumulation of this six-month period and of the priority period under the /Paris/ Convention therefore arises. In the text of Article 55(1) EPC, the French term "dépôt" and the term "filing" correspond to the term "Einreichung" in the German text. This term "Einreichung" was expressly chosen to replace the term "Anmeldetag" (= date of application) at the Munich Diplomatic Conference and, according to the German delegation, this amendment was apparently intended to ensure that the period would not be understood as relating to the date of priority but to the actual date of filing of the European patent application. (see R. Singer - GRUR Int. 1974, p. 63, left-hand column.) In the light of the minutes of the "travaux préparatoires" for the Munich Conference, it would therefore seem that one should take account of the effective date of filing and not the priority date, where claimed (Minutes of the Munich Diplomatic Conference, M/PR I No. 61). This, at least, is an assessment to be found in several reference works (P. Mathely: Le droit européen des brevets d'invention, 1978, p. 119; R. Schulte: Patentgesetz 1981, p. 72). But the Board notes that there is no unanimity of doctrine on the question of this period (J.M. Mousseron: Traité des brevets. CEIPI. 1984, p. 287 and 288, paragraph 259). In any case, a reply to this question is not necessary in this particular case, for in the Board's opinion the disclosure (document (3)) did not arise from an evident abuse in relation to the appellants.

6. Within the meaning of Article 55(1)(a) EPC, there would be evident abuse if it emerged clearly and unquestionably that a third party had not been authorised to communicate to other persons the information received. In the Board's opinion, there would be abuse not only when there is the intention to harm, but also when a third party, knowing full well that it is not permitted to do so, acts in such a way as to risk causing harm to the inventor, or when this third party fails to honour the declaration of mutual trust linking him to the inventor. In this particular case, it does not emerge from the items added to the dossier that Göbel und Pfrengle failed to fulfil their obligations towards the applicants in producing and passing on their technical information bulletin (Annex to document (3)) to their clients. On examining this Annex and the accompanying letter from Göbel und Pfrengle, the Board failed to find any indication showing that the former had abused the appellants' trust. In fact, document (3) contains a set of technical information on a product which is not defined as to its composition, and is provided by the supplier without any commitment or guarantee. The Board considers it to be a normal item of correspondence between a manufacturer and his potential customers. There is nothing in the dossier to suggest that other firms who might be potential customers were not also contacted. The appellants' allegation that there had been a breach of a tacit understanding of secrecy which had existed for three years is not supported by any proof. On the contrary, none of the documents submitted by the parties in the proceedings mentions anything about confidentiality. Seen from this viewpoint, the first exchange of correspondence (25 November 1975 and 22 December 1975) with Göbel und Pfrengle is no different from the correspondence with other companies likely to supply the product under investigation (see letter of 2 February 1977 from Ashland, the letter addressed by the appellants on 4 June 1976 to Finorga and the latter's reply dated 24 March 1977, and the appellants' letter to Protex dated 25 October 1976). For the above reasons, one cannot conclude that there has been abuse on the part of the company supplying the product. Anyway, the appellants do not rule out the interpretation according to which Göbel und Pfrengle deliberately omitted to indicate the chemical composition of the product which it was offering to Kabel- und Lackdrahtfabriken (opponent I) for testing (see statement of grounds, II (e)). Thus document (3) constitutes a disclosure which contains neither the precise designation of the product under investigation, nor the final effect sought by the appellants. Opponent I, who certainly was not bound to the proprietor by any secrecy agreement, was therefore able to use for his grounds of opposition a document which he was entitled to consider public and published in the relevant time. In conclusion, the Board deduces from the above facts that document (3) does not result from an evident abuse in relation to the appellants and therefore does not conform to the definition of a non-prejudicial disclosure given in Article 55(1) EPC. It therefore forms part of the state of the art in accordance with Article 54(2) EPC and can be taken into consideration for the assessment of inventive step.