IP Cases & Articles

Non-therapeutic disclaimers and prior use in T 2451/13

​Two interesting points emerged from this recent decision of the European Patent Office (EPO) Board of Appeal. The first concerns the circumstances under which a new ground of opposition may be raised after expiry of the opposition period, and the second concerns the standard of proof for establishing a public prior use.

The patent in question concerned a non-therapeutic method for "sensoric imprinting" of different tastes in an infant by administering food products containing different vegetables. The patent explained that sensoric imprinting prevents an infant from acquiring a dislike for the taste of different vegetables, and stimulates vegetable consumption later in life.

Non-therapeutic disclaimers

The opponent had initially attacked the patent on the grounds of lack of novelty and inventive step, insufficiency and added matter. However, after expiry of the opposition period, a new ground was raised by the opponent, namely that the method concerned a therapeutic method and so was excluded from patentability under Article 53(c) EPC. The opponent was prompted to add this new attack by the publication of another decision (T1635/09), which held that if the therapeutic and non-therapeutic aspects of a use cannot be separated, the exclusion from patentability cannot be overcome simply by specifying "non-therapeutic" in the claim. In the present case, the patent taught that as result of healthier eating habits, junk food-related health problems such as obesity and diabetes were prevented. Hence the opponent argued that the method of sensoric imprinting of claim 1 was "inextricably linked" with the prevention of diseases later in life.

The Opposition Division exercised its discretion and decided to admit this new ground into the proceedings, on the basis that it was reasonable to accept the late filing as a reaction to publication of the other decision, and because the ground was prima facie prejudicial to the maintenance of the patent. The Board of Appeal agreed with the decision of the Opposition Division to introduce the new ground, as they had applied the correct principles in a reasonable way as required by G7/93. The Board of Appeal also agreed with the Opposition Division's finding that the claimed method was inextricably linked to the therapeutic effects and so claim 1 was held to be invalid under Article 53(c) EPC, despite the "non-therapeutic" disclaimer.

Prior use before the priority date

The second point concerns the alleged public prior use of the invention before the priority date. The opponent filed a new document (D16) with the grounds of appeal, in order to prove that the teaching of a document filed during the opposition proceedings (D2) was publicly available before the priority date. The copyright date indicated in D16 was 2002, which is about four years before the priority date of the patent. The patentee argued that a copyright date was of little value as evidence of public availability on that date (referring to T 1257/04). A copyright date was in particular not sufficient to show that this document was actually printed, let alone distributed, before the relevant date.

Furthermore, D16 originated from a company which was now a subsidiary of the opponent (Gerber). In cases of public prior use having taken place in the opponent's company or exclusive sphere of influence, the standard of proof applied by the boards is very strict. As stated in T 472/92, in these cases "... an opponent must prove his case up to the hilt, for little if any evidence will be available to the patentee to establish the contradictory proposition that no prior public use had taken place". The patentee argued that "up to the hilt" meant "absolute certainty", rather than merely the balance of probabilities.

The Board of Appeal noted that T 472/92 did not specify precisely the conditions to be fulfilled for a party to prove its case "up to the hilt", but that the conclusions were based on "an extremely high degree of certainty" and not "absolute certainty". The Board of Appeal also referred to a number of subsequent decisions where this standard of proof was interpreted to mean "beyond reasonable doubt" and agreed that this was the correct standard to apply.

The question was therefore whether the opponent had proven beyond reasonable doubt that D16 was available to the public before the priority date of the patent. D16 addresses parents and gives them instructions on how to feed their infants. In view of this, it would be "contrary to life experience to assume that D16 was not published but rather kept by Gerber in the drawer for about four years, ie, until at least (after) the priority date of the patent". This was corroborated by D17, which is an advertisement published in 2002 that gave the same recommendations and used the same pictures as in D16. The Board of Appeal was therefore convinced that it was quite clearly beyond reasonable doubt that D16 was published before the priority date of the patent.