The latest library decision

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The latest library decision- T834/09

4 March 2014

By Lasse Ringhofer

4 March 2014

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• Art 54(2) EPC says:

• “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.”

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Legal context – public availability

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• The EPC uses the ”absolute state of the art criterion” reflecting the fact that the EPC contains:

- No restrictions as the the means of disclosure

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The ”absolute state of the art” criterion

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- No restrictions as to the language

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- ”No” restrictions in time (e.g. no time zones)

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- No geographical restrictions

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- No geographical restrictions

- No restrictions as to ”the public” to whom the art has been made available

(In the EPC, only two exceptions to the ”absolute state of the art criterion” namely European prior rights (Art 54(3) EPC) and non-prejudicial disclosures (Art 55 EPC))

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Board of appeal case law has established that “made available” requires:

• the theoretical possibility of having access to information renders it available to the public (see e.g. T 444/88)

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”..made available” (Art 54(2) EPC)

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Case law of the EPO has stipulated that information is available to “the public” if:

(i) only a single member of the public

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”…the public” (Art 54(2) EPC)

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(i) only a single member of the public (ii) is in a position to gain access to it

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(i) only a single member of the public (ii) is in a position to gain access to it (iii) and understand it**, and

(** oral disclosure at e.g. a lecture (e.g. T877/90) - if non-oral disclosure, no certain educational level of the public member required (e.g. T165/96))

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(i) only a single member of the public (ii) is in a position to gain access to it (iii) and understand it**, and (iv) if there is no obligation to maintain secrecy (see e.g. T1081/01).

(** oral disclosure at e.g. a lecture (e.g. T877/90) - if non-oral disclosure, no certain educational level of the public member required (e.g. T165/96))

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• In T381/87 it was considered that the physical act of shelving a document established the public availability of a document in a public library, regardless of whether any person looked at it or actually knew it was available.

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The 1st library decision – T381/87

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• Additionally, documents (e.g. latest edition of a periodical) which has not yet entered in a library-catalogue but which may be requested is part of state of the art

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• Additionally, documents (e.g. latest edition of a periodical) which has not yet entered in a library-catalogue but which may be requested is part of state of the art

• Thus, early case law stipulated that the date of shelving a document (e.g. a scientific publication) in a public library and the fact that any person could request access to said document determined the date of public availability

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• In T 1137/97 the board stated that the strength of the presumption in favour of the accuracy of a "Received" date marking appearing on the copy of a journal in a library as evidence of the actual date when the journal was made available to the public would depend on the library routine used (e.g. handwritten “Received” date not accepted by the EPO)

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The 2nd library decision – T1137/97

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• In T 1137/97 the board stated that the strength of the presumption in favour of the accuracy of a "Received" date marking appearing on the copy of a journal in a library as evidence of the actual date when the journal was made available to the public would depend on the library routine used (e.g. handwritten “Received” date not accepted by the EPO)

• Thus, whether ”Received” date qualifies as the date of public availability has to be established case-by-case.

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The 2nd library decision – T1137/97

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• In T 314/99 it was undisputed that the diploma thesis arrived in the archive of the Chemistry Department Library of the University of Hamburg before the priority date.

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The 3rd library decision – T314/99

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• However, in the Board's judgment, the diploma thesis did not by its mere arrival in the archive become publicly available, since that did not mean it was as of that point in time catalogued or otherwise prepared for the public to acquire knowledge of it, and because without such means of information the public would remain unaware of its existence.

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• However, in the board's judgment, the diploma thesis did not by its mere arrival in the archive become publicly available, since that did not mean it was as of that point in time catalogued or otherwise prepared for the public to acquire knowledge of it, and because without such means of information the public would remain unaware of its existence.

• Thus the mere ”date of arrival” does not qualify as date of public availability. Rather, the possibility that the public could acquire knowledge or awareness of the existence of a document – for instance by cataloguing - was seen as a precondition of its public availability in the library.

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Case summary:

• Appel of opposition division’s revocation of EP904607B1 (OD revoked the patent on 9 December 2008)

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The latest library decision - T834/09

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Case summary:


• Priority date of revoked patent: 23 April 1996

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Case summary:



• Disputed claim 1 said “A cathode material for a rechargeable electrochemical cell...”)

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Case summary:



• Disputed claim 1 said “A cathode material for a rechargeable electrochemical cell...”)

• In the opposition procedure, the parties agreed that the subject-matter of above claim 1 was disclosed in its entirety in document D1

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• D1 was a scientific article with the following bibliographic data:

”A. K. Padhi et al: "LiFePO4: A Novel Cathode Material for Rechargeable Lithium Batteries", The Electrochemical Society, Inc. Meeting, Abstracts, Volume 96-1 (Spring Meeting, Los Angeles, Calif., May 5-10, 1996), page 73, Abstract No. 58.”

(i.e. an example of premature publication of scientific data (K. Padhi was author of D1 as well as inventor of the disputed patent))

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• The patent proprietor nevertheless contested that document D1 had been made available to the public before the priority date of the contested patent, i.e. before 23 April 1996, e.g. because:

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• The patent proprietor nevertheless contested that document D1 had been made available to the public before the priority date of the contested patent, i.e. before 23 April 1996, e.g. because:

• ”…it has not been proven that D1 had been catalogued and shelved in public libraries before the priority date…” (i.e. the criteria applied in the former library decisions)

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• In the contested decision, the opposition division concluded that document D1 was made available to the public before this date because:

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(i) it was proven that it had been received by several libraries well before the above date and

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(ii) electronically catalogued by one of these libraries on 9 April 1996.

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(ii) electronically catalogued by one of these libraries on 9 April 1996.

• The opposition division considered that “…once an electronic registration took place, the respective document was also retrievable for the public, even though it was not shelved". [emphasis added]

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• The decision of OD was appealed and in its decision of 2 February 2012 (i.e. T834/09) the Board emphasised e.g.:

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• The decision of OD was appealed and in its decision of 2 February 2012 (i.e. T834/09) the Board emphasised e.g.:

(Reasons: 6.2) ”[general consideration]…in the case of a written disclosure it is irrelevant whether the staff member is a person skilled in the art or not, because the content of a written disclosure can be freely reproduced and distributed even without understanding it.” [emphasis added]

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…and:

(Reasons: 6.3) “[in the present case]…at least one person - the member staff in charge of the reception and stamping (i.e. the librarian) - had free access to the document and could, at least theoretically, have passed the information contained therein on to anybody else.” [emphasis and comment added]

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…and:

(Reasons: 6.3) “[in the present case]…at least one person - the member staff in charge of the reception and stamping (i.e. the librarian) - had free access to the document and could, at least theoretically, have passed the information contained therein on to anybody else.” [emphasis and comment added]

…and:

(Reasons: 6.2) “…date stamping an incoming document in a public library is the point of time at which the document is leaving the non-public domain and entering the public domain.” [emphasis added]

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…and:

(Reasons: 7.0) “…the action of receiving and date stamping an incoming document in a public library suffices to make a written document available to the public” [emphasis added]

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• On this background the Board held that the novelty-destroying document D1 was indeed “made available to the public” before the priority date even if it had not been proven that D1 was “catalogued and shelved”.

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T834/09 – conclusion

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• This background the Board held that the novelty-destroying document D1 was indeed “made available to the public” before the priority date even if it had not been proven that D1 was “catalogued and shelved”.

• Thus, even though the Board upheld the opposition division’s decision of revoking the patent (2 February 2012), it was not based in the OD’s “received and electronically catalogued” criteria but rather on a “received and date stamped” criteria.

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T834/09 – conclusion

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• After T834/09 the decisive criteria concerning public availability of a document in a library seems to have shifted from:

”catalogued and shelved”

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Take home message

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to

”received and catalogued”

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Take home message

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to

”received and catalogued”

to

”received and date stamped*”

(*regardless of the educational level of the responsible librarian who is considered as a ”single member of the public”)

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Take home message

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