3.1. Relevance of the evidence
3.1.2 Offering evidence – effect on the outcome of the dispute
See the introduction above with reference to T 329/02 and T 860/01.
According to T 716/06, it is true that where oral evidence of a witness is requested by a party the competent EPO department should grant this request only if it considers this oral evidence necessary, i.e. when it is required to clarify matters that are decisive for the decision to be taken. If a request is made by an opponent to hear a witness on an alleged public prior use and on the disclosure of a certain feature by this prior use, the competent department of the EPO must as a rule grant this request before deciding that the alleged public prior use is neither established nor a novelty-destroying part of the state of the art because the feature in question is not found to be disclosed therein. In T 2003/08 of 31 October 2012 date: 2012-10-31 the board – in contrast to the opposition division – considered it appropriate to hear the witnesses because their testimony could affect the outcome of the proceedings.
In T 246/17 the opposition division had declined to hear the witnesses offered in relation to prior use and considered the public prior use to be adequately proven by the documentary evidence. However, the board came to the conclusion that it could not be ruled out that hearing the witnesses, alongside evaluating the documentary evidence, could have led to a different assessment of novelty and inventive step and thus to a different outcome. The disclosures of documents O1 (manual) and O2 (brochure) left open whether certain features were present in the instrument described, but the instrument had actually been made and sold and might itself have disclosed them even though O1 and O2 did not, and this was a matter which witness testimony could resolve. Not hearing the witnesses was therefore a fundamental procedural violation that justified setting the decision aside (see e.g. T 716/06, T 1363/14 and T 314/18).
In T 1100/07 (alleged prior use, sale of a vehicle with a given feature), the department of first instance had refused to hear two witnesses. The board held that it had been right to refuse to hear one of them, as he would merely have confirmed what he had said in his written statement about documents that anyway spoke for themselves and hearing him would have had no impact on the final decision. It should, however, have heard the other witness. It was true that the request that he be heard had been filed late and that granting it would have meant adjourning the oral proceedings, but the opposition division had based its final decision on a failure to establish the prior existence of a single given feature and the witness would allegedly have been able to give evidence on that very point. Thus, the refusal to hear him was wrong and might have affected the outcome of the decision.
In T 273/16, during the opposition proceedings the appellant-opponent had, on multiple occasions, requested that two witnesses be heard on the alleged prior use of a commercial dishwasher. The opposition division had opted not to invite the witnesses. Its decision appeared to be based primarily on the fact that no production or sale of the dishwasher had been demonstrated. Yet the opponent had offered the two witnesses in relation to that very issue. The decision not to hear the witnesses was therefore incorrect and might have influenced the outcome of the proceedings.
- T 778/21
Abstract
In T 778/21 (laundry appliance), the opposition division concluded inter alia that the subject-matter of claim 1 of the patent as granted was not new in view of both document E2 and the prior use (PU) relating to a washing machine. Both parties appealed. The opponent alleged that the sale of the prior use PU washing machine as detailed on the invoice PU1 and the related affidavits of Mr N. (PU3) and Mr E. (PU2) sufficed for proving that the machine was publicly available. Serial numbers were unique, so the indication of the serial number of the prior use machine allowed a definitive identification of the machine. Thus, in the opponent's view, the inspection of the machine or the hearing of witnesses as requested by the proprietor was not necessary. The errors in the opponent's grounds of appeal associated with the model number for the prior use PU were to be seen as clerical errors. The proprietor inter alia submitted that in view of the doubts presented already in the opposition proceedings, an inspection of the machine with serial number C21850524 and the hearing of witnesses would have been necessary for verification.
The board first dealt in detail with several issues in relation to RPBA and late filed submissions at different stages, eventually most not admitted. On a particular late submission, the board did not accept the opponent's argument that documents filed during the written stage of the opposition proceedings should generally be included in the appeal by default. Regarding the opponent's reaction to the preliminary opinion of the board, in which the opponent explained that the incorrect association of model number WFW97HEXW2 with serial number C21850524 was a clerical mistake, the board found that exceptional circumstances existed that in its view justified admitting the opponent's explanation.
Concerning the general principles for assessing an alleged prior use, the board set out four steps that should generally be made (detailed in the Reasons). Steps 1 to 3 consisted in the examination of the substantiation of the prior use, establishing the evidence offered by the opponent as bearing the burden of proof and the evaluation of the entire evidence offered by the opponent. Depending on the outcome of this evaluation, step 4 could vary (three variants) depending on whether or not the opponent's evidence on file confirmed the alleged facts, or if doubts remained, and whether the opponent did (first variant) or did not (second variant) request an inspection or hearing of witnesses (see the detailed Reasons as to the consequences). If, in the third variant, the opponent's evidence confirmed the prior use, the (counter) evidence offered by the patent proprietor would become relevant and would need to be considered. If assertions made in an affidavit or in any other witness declaration remained contested, a request from a party to hear the (available) witness would have to be granted. The board made reference to G 2/21 (points 41, 42, 44 of the Reasons) and to T 474/04.
In case T 778/21, the board applied these general principles for assessing the alleged prior use. Steps 1 to 3 of the assessment were fulfilled. Step 4 concerned the third variant, therefore the proprietor's request for an inspection of the washing machine and for hearing the authors of the affidavits as witnesses needed to be granted. Since the alleged instance of prior use concerned a specific machine to which the proprietor had no access, the applicable standard of proof was either "beyond all reasonable doubt" (T 97/94) or that the deciding body had to be convinced with a sufficient degree of certainty (T 1138/20, T 545/08). Thus, based on the submissions and evidence on file, the board found that the opponent had substantiated that the machine of the prior use was made available to the public and had provided evidence confirming the related facts. Based on the evidence on file, all features of claim 1 were seen to be known from the prior use. Therefore, the patent proprietor's request for taking (counter) evidence (step 4, third variant) needed to be considered. A final conclusion on whether all relevant aspects of the prior use, including public availability, were proven beyond reasonable doubt, could only be drawn after considering the evidence requested to be considered by the proprietor, i.e. after inspecting the machine and hearing the witnesses. The case was remitted to first instance for further prosecution.