Pages 321-327

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

SE Sweden

Judgment of the Court of Patent Appeals of 10 May 1995

(Modul-Elektronik AB v. AB Cale Industri)

Headword: Device for pay dispensers

Section 2, Swedish Patents Act

Article 54 EPC

Keyword: "Novelty - prior art - public prior use by placing a product on the market - reproducibility of product for skilled person" - "G 1/92 cited as landmark decision"

Headnote

1. A product which is brought onto the market without any explicit or implicit secrecy proviso is considered prior art within the meaning of Section 2 of the Swedish Patents Act as of the date on which it was placed on the market, even if the number of products sold is restricted to a single sample and irrespective of whether the product's construction and function are directly apparent or whether a special investigation of the product is required first.

2. This principle always applies where a product is constructed in such a way that a skilled person is able to reproduce the design unambiguously using normal methods. Exceptions should only be made when there are difficulties of technical interpretation rendering the skilled person's knowledge and the usual investigation methods and other interpretation aids available to the skilled person insufficient to make the product's design and function unambiguously clear.

Extract from the decision of the Swedish Patent and Registration Office of 3 May 1993:

The patent application [No. 8904126-3] has been refused as of today's date.

This decision is based on the claim submitted on 6 December 1991.

Notice of opposition to the patent application has been filed by AB Cale Industri.

The application relates to a device for pay dispensers making it possible to pay by credit card as well as coins.

The device is intended to be installed in pay dispensers so that they can receive payment by credit card as well as coins. In the original circuit of a pay dispenser fitted with a first computer unit, a second computer unit is connected between the dispenser's coin or bank note verifier and the first computer unit.

The second computer unit is so arranged that after payment of a certain amount by credit card has been accepted, a signal is delivered to the first computer unit matching that which the coin or bank note verifier would have received if one or more coins corresponding to the said amount had been accepted.

The opponent asserts that the invention was generally available by means of sale prior to the patent application's date of filing.

Judgment of the Court of Patent Appeals

The Court of Patent Appeals has decided to dismiss the appeal by the applicant.

From the Court's investigation of the case the following is apparent. On 6 December 1989, the present patent application was filed with the Patent Office, which subsequently approved it for public inspection (opposition). An opposition was filed, claiming that a type of parking fee pay dispenser of the opponent's own design had been constructed entirely in accordance with what was apparent from Claim 1 and was generally accessible through use prior to the date of filing of the patent application. Two dispensers of the type concerned had been supplied to Parkeringsbolaget Stockholms Stads Parkerings AB and set up at Skeppsbrokajen on 19 May 1989. The dispensers were invoiced on 30 October and payment was made on 30 November 1989. During weeks 47-48 of the same year, ie at the latest on 3 December 1989, the locks on the dispensers were changed, and control of them was transferred to the car parking company. The opponent asserts that at least as from the payment date of 30 November 1989 the sale of the dispensers must be considered as completed. In the light of the above and having regard to Swedish and EPO practice (see, in particular, board of appeal decision T 482/89, OJ EPO 1992, 646) on the question of general availability as a result of sale, the opponent maintains that the dispensers were generally accessible before the date of filing of the patent application within the meaning of Section 2 of the Patents Act, and that the dispenser referred to in Claim 1 is consequently known and thus not patentable.

The applicant for his part asserts that 3 December 1989, ie the latest date on which the change of locks can have occurred, should be considered as the date of sale of the dispensers. According to the applicant, however, this does not mean that the circumstances as a whole are such that the pay dispensers should be considered as generally available within the meaning of the Patents Act. To support this opinion, the applicant refers primarily to some decisions of the European Patent Office, more specifically the decisions in cases T 461/88 and G 1/92, the latter taken by the Enlarged Board of Appeal (OJ EPO 1993, 295 and 277, respectively). The former case refers to a printing press provided with a microchip which contains the program for the control process stored in machine language. The process concerned was considered not to have become known through the sale of the printing press, partly because the basic principles of the process could not be established by inspection, and an analysis of the program contents would be too expensive in relation to the benefits (see German official text). In G 1/92, the Enlarged Board of Appeal states that a product which is available to the public and can be analysed must be regarded as known, irrespective of whether or not particular reasons for such an analysis exist. The analysis concerned should not however involve any undue burden. The applicant asserts that the circumstances in the present case are wholly analogous to those in the printing press case. The program for the control process of the dispenser for which a patent application has been filed is stored in a microchip, and an analysis of the program would be too time-consuming and expensive and involve undue burden. The brief period available from the selling date of 3 December 1989 must also be taken into account. Moreover, before the Court of Patent Appeals the applicant has abandoned his earlier categoric admission that the dispensers referred to were designed in accordance with what is set out in Claim 1.

In the light of what has been referred to above and is otherwise apparent from the investigation, the Court of Patent Appeals notes the following considerations.

To avoid any misunderstandings, it should be pointed out from the outset that the examination of this case is primarily concerned with establishing the extent to which the pay dispenser referred to by the opponent can be considered as constituting prior art within the meaning of Section 2 of the Patents Act, this being the basis for an assessment of whether the invention referred to in Claim 1 displays the required novelty and inventive step.

As regards the detailed design of the parking meters referred to, the opponent has submitted certificates from F. (dated 1.11.1991) and L. (dated 31.10.1991), both of whom participated in the development of the dispensers concerned as designer and project manager, respectively. The detailed, identical reports concerning the dispensers show that at the time of installation their design and function were wholly in accordance with what is apparent from Claim 1. The fact that a modification in the dispensers may have taken place during a later period, as is alleged by the applicant, is nothing remarkable and does not constitute a reason to question the information given by F. and L.

As regards the date of sale of the dispensers, it would seem unnecessary for the purposes of this judgment for the Court of Patent Appeals to adopt a position on whether the purchase was completed earlier than 3 December 1989.

As regards the extent to which the sale of the dispensers concerned means that they became generally available within the meaning of the Patents Act, it is Swedish practice to consider a product brought onto the market without any agreed or implicit secrecy proviso as prior art within the meaning of Section 2 of the Patents Act, even if the number of products sold is restricted to a single sample and irrespective of whether the product's construction and function is directly apparent or whether a special investigation of the product is required in order to gain knowledge of it. This practice is fully in line with the cited decision of the Enlarged Board of Appeal (G 1/92) where, however, it is stated in the Reasons that the investigation concerned should not involve "undue burden". The meaning of this term is not defined in the decision and is not very easy to interpret. But since the decision concerned refers primarily to chemical products whose analysis may present substantial technical difficulties, the requirement as regards the extent of the investigation can scarcely be particularly low. This is especially the case if the Board had intended that other than technical difficulties and sources of error in the investigation should also be considered in the assessment of this requirement.

The following fundamental reasons also support the above interpretation. The basis of the formulation of the novelty condition - which is the same in Section 2 of the Patents Act and Article 54 EPC and is based on an identical formulation in Article 4 of the Council of Europe's so-called Strasbourg Convention of 1963 - is the requirement of general or absolute novelty, ie irrespective of how something may have become generally available it constitutes prior art. The background to this is society's interest in ensuring that a monopoly in the form of a patent should only be granted to someone who furnishes society with technology which is new - a viewpoint which was already expressed clearly in the provisions introduced into the Strasbourg Convention concerning the novelty-destroying effect of earlier patent applications on subsequent patent applications (in the case of Sweden: Section 2, second para., second sentence). A further consequence of the wording of the patentability requirements, including that of general novelty, is that the effect is independent of the language and place in which something becomes available. Thus, according to the Patents Act, information found in a technical publication drafted, for example, in Chinese and available from a certain date at only one Chinese library open to the public still constitutes prior art as from that date. The effect is thus independent of any subjective considerations such as insufficient resources in terms of language, time or cost which might make it more difficult for the individual skilled person to benefit directly from the publication (or other form of disclosure) and its technical contents. The novelty requirement's meaning would otherwise be dependent on something other than the competence and technical knowledge the skilled person is considered to possess within the meaning of the Patents Act1, and thus risk having different meanings for different skilled persons. Against this background, there have to be very strong reasons for a product put on the market without a secrecy proviso on a certain date and whose design does not preclude a skilled person from being subsequently able, using normal methods, to reproduce the design unambiguously, not to constitute a novelty-destroying disclosure as from that date in relation to subsequent patent applications, regardless of whether or not the application was filed by the person who brought the product on to the market or someone else. In principle, exceptions to this should thus only be made when there are difficulties of technical interpretation rendering the skilled person's knowledge and the usual investigation methods and other interpretation data available to him insufficient to make the product's design and function unambiguously clear. The significance of pure novelty-destroying disclosures will thus - as is the practice in the case of technical literature - always be restricted to what constitutes comprehensible and useful technical information for the skilled person.

The above decision of the Enlarged Board of Appeal thus does not exclude such an approach. The printing press decision - which preceded the Enlarged Board of Appeal's decision - appears however to be incompatible with this approach, and no great significance should therefore be attached to it in the case in hand.

In the opinion of the Court of Patent Appeals, there are also so many dissimilar factual circumstances in the present case compared with those in the printing press case that no direct comparison as regards the outcome can be made.

In the present case, the skilled person carrying out the necessary investigations must be familiar with the basic design of the dispensers in question, i.e. dispensers for parking fees without card readers. Moreover, it should not be too labour-intensive for him to establish, by determining the wiring and analysing the signal pattern in association with the operation of the card reader, the dispenser's basic construction and function to the extent defined in Claim 1. An additional point is that the observation that the dispenser can be operated using credit cards as an alternative to coins would itself make it appear probable to the skilled person that this is brought about either by modifying the existing computer or by adding another computer. The necessary investigation of the dispenser cannot therefore be considered to involve any "undue burden", irrespective of whether, apart from any technical difficulties and sources of error, the costs and time aspects are taken into account.

In the circumstances, the dispensers referred to by the opponent must be considered as known prior to the application's date of filing within the meaning of Section 2 of the Patents Act. Since the invention referred to in Claim 1 lacks novelty, it is not patentable. The appeal cannot therefore be allowed.

SE 1/98