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Public prior use – Still a Gordian knot in opposition proceedings

This past week I had an interesting hearing at the EPO where an opposition was based, inter alia, on public prior use.

The opposition division heard a number of witnesses on the question whether the features of a specific device had been publicly available. Prior to the hearing, the opponent had to admit that there actually had been a written confidentiality agreement between the manufacturer and the purchaser of the machine who then used it in his plant. Furthermore, he admitted that plant where the machine was erected had been secured by a fence and a security service against intruders. However, the opponent contended that third parties occasionally did have access to the plant and the dev [...]

Painting a picture of prior use anticipation attacks

When does the demonstration of a model at a trade fair, or a similar limited availability of a product, constitute novelty-destroying prior disclosure? Although it will depend on the patent claims, the public’s opportunity to investigate the model may be important as demonstrated in the recent case of Wagner v Earlex*.

As of the implementation of the EPC, prior use in and of itself no longer anticipates a patent claim under UK patent law. The English courts have also now adopted the EPO approach on ‘availability to the public’ (as set out by the Enlarged Board in decision G1/92), although the English courts refer to the requirement for an ‘enabling disclosure’. If the person sk [...]

LG Electronics Inc v Sony Europe Limited and others [2011] EWHC 2319 (Pat)

The English High Court has refused to grant summary judgment to LG Electronics in relation to validity of certain patents, holding that, due to the uncertainty of the legal issue concerning the confidentiality of the prior disclosure relied on, the matter was not relevant for summary judgment.

LG Electronics (“LG”) sued Sony for infringement of three patents relating to Blu-Ray technology (technology which involves optical disc storage media designed to supersede the DVD format). Sony defended the claim on the grounds that all three patents were invalid and counterclaimed for revocation.

The earliest priority date of the patents in suit was March 2003. In Sony’s grounds of invalidity, [...]

Circular fluorescent lamp/Osram, European Patent Office (EPO Board of Appeal), 17 March 2011

The opponent relied on a document that was distributed in a meeting arranged by himself. The Board of Appeal held that in the present case, it did not share the view of the patentee that it was impossible for him to prove non-distribution and that therefore the burden of proof was with the opponent. In the view of the Board, the patentee had the possibility of disproving public availability of the document, e.g. by contacting further participants of the meeting who might testify that the document had a different content, was distributed later etc.

Click here for the full text of this case. A summary of this case will be posted on

The World Patent and the World Patent Litigation System

Imagine: Wouldn’t it be fantastic to have one single patent which you could apply for at the WPO, the World Patent Office? A World Patent, which would be valid worldwide and which could be enforced in each single country of the world with worldwide effect? Decisions of the national local chambers of the World Patent Court (WPC) could be appealed at the WPSGC, the World Patent Global Supreme Court. Wouldn’t this be a major breakthrough in improving IP protection and decreasing patent costs for the industry?

Well as always, the problem comes with the details: Shall the system allow distinguishing between first, second and third World Patents? Will there be an exemption for extraterrestrial [...]

VM Tarm v. Mørch & Sønner A/S, Supreme Court (Højesteret), 12 December 2008

The Appellant had obtained both utility model and patent protection for a mechanical invention. The Defendant argued that the subject matter of both rights did not fulfil the novelty requirement, because it had been disclosed to the public by demonstrations of the invention to both individual persons and corporate entities prior to the priority date.

The Supreme Court upheld the High Court decision that – based on the provided evidence of these demonstrations – it was not possible to assess whether the skilled person would have been able to carry out the invention. Since it could not be determined that the demonstrations constituted an enabling disclosure, the novelty argument was dismissed [...]

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