JULY 2012: RECENT DECISION BY THE EPO T0834/09 CONCERNING THE PUBLIC AVAILABILITY OF A DOCUMENT BEFORE THE PRIORITY DATE
According to the European Patent Convention, Article 54(2), the state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
Facts of the case
In an opposition procedure, the patentee and the opponent agreed on the fact that the subject-matter of claim 1 was disclosed in a scientific article. However, the patentee contested that the article has been made available to the public before the priority date of the contested patent.
The scientific article was received in a library before the priority date of the patent and stamped with the reception date. However, there was no evidence, when the scientific article was actually shelved.
Decision rendered by the Federal German Supreme Court
Generally, according to European practice, the simple possibility that the public gains access to the information is required for being considered prior art according to Article 54(2) EPC. Thus, for this decision, the European Patent Office had to decide at what time the public had the possibility to read the scientific article.
In previous decisions, the EPO has decided that shelving (see T0381/87) or cataloguing (T0168/01) was seen as a precondition of the public availability. Further, it is enough, when a single member of the public is in a position to gain access to it and understand it, and if there is no obligation to maintain secrecy (T1081/01).
The board of appeal concluded that the person in charge of the reception and date stamping of an incoming document at a public library is a member of the public, and his/her function as a staff member of a public library is to make information available to the public. Further, she/he is not bound by any obligation to maintain secrecy and is thus free to pass the document on to others, which is his/her job. Additionally, the board pointed out that is irrelevant, for a written disclosure, whether the staff member is a person skilled in the art, because the content of a written disclosure can be freely reproduced and distributed even without understanding it.
Therefore, the board decided that the date of stamping an incoming document in a public library is the point of time at which the document becomes part of the state of the art.
The board of appeal of the European Patent Office underlined also in this case that the theoretic possibility of the availability to the public, here the reception of a document by a public library, is sufficient for a document to be prior art according to Art. 54(2) EPC.
Contact : Jacob Klinkisch
Publication date : July 2012