http://ipkitten.blogspot.com/2019/11/shifting-burden-of-proof-for-back-to.html
In disputes of insufficiency before the EPO, the burden of proof is initially on the side of the party alleging that the patent or application is insufficient. An opponent arguing that an invention is insufficiently disclosed generally must provide evidence that, despite making all reasonable efforts, they were unable to put the invention into practice (see T 30/15, 1.4.1) (Article 83 EPC). However, as a recent Board of Appeal decision confirms (T 1299/15), it is possible for the burden of proof to shift back to the patentee if “serious doubts” exist regarding whether a skilled person could carry out the invention.
Legal background: Burden of proof
The established case law of the Boards of Appeal is that each party bears the burden of proof for the facts it alleges. During prosecution, the burden of proof lies initially with the Examiner. An Examiner may not, for example, simply recite common general knowledge against a claim if the common general knowledge (CGK) is disputed. The Examiner must instead provide documentary evidence of the CGK. Similarly, for an insufficiency, novelty or inventive step objection, the burden of proof is initially on the Examiner (T 578/06, r. 13). Notably, a recent Board of Appeal also removed the burden of proof from the applicant to demonstrate the novelty of purity inventions (T 1085/13, IPKat post here).
During opposition, the burden of proof very clearly rests with the opponent, at least initially. This applies to all forms of objection, from novelty to insufficiency. However, it is also possible for the burden of proof to shift back to the patentee in certain circumstances. In T 570/08, for example, the opponent and patentee had both submitted data relating to whether the objective problem had been solved. The opponent’s data contradicted that of the patentee. The Board of Appeal was convinced that the opponent’s data created sufficient doubt so as to place the burden of proof on to the patentee.
The patent (EP 2191187) at issue in T 1299/15 related to a device and method for renewing buried pipes. The claimed device coats the inside of the pipes with resin and then cures the resin using LEDs. The granted patent claimed a pipe renewer comprising a spiral shaped carrier on which LEDs are arranged in a specified pattern. The pipe renewer also comprises an “adjusting device”, with which the circumference of the spiral-shaped carrier may be adjusted. The claim of insufficiency was directed at the design of the adjusting device.
The opponent (Aarsleff, a Danish construction company) argued that the specification did not provide any embodiments of the “adjusting device”. The adjusting device is not shown in the Figures and is mentioned only once in the specification. Furthermore, the opponent argued that there were doubts as to the feasibility of the adjustment device. In particular, how may the adjusting device be attached to the carrier? The specification suggested that pneumatic arms may be used but did not indicate how these arms may be designed so as to be compatible with a spiral carrier varying in width and length.
The Board of Appeal (3.2.05) considered the question of whether the patent (together with common general knowledge) sufficiently disclosed the adjusting device. A key problem faced by the skilled person, the Board reasoned, was how to design the adjusting device so that it could accommodate the complex 3D movements of the spiral windings. The skilled person would also have to design the adjusting device so that the arrangement of the LEDs was maintained.
Importantly, as well as not providing an embodiment in the specification, the patentee did not submit or prove that adjustment devices, such as the claimed device, were already known. The Board accepted that an expert may be able to find solutions for the problems associated with designing the adjustment device. However, the Board doubted whether such solutions could be found without inventive skill.
Therefore, the Board concluded that there were doubts as to whether the invention had been sufficiently disclosed. Furthermore, the Board reasoned, the burden of proof had shifted from the opponent to the patentee. This was because the patentee had failed to provide even one example of an adjustment device as claimed. The patent was therefore revoked for insufficiency.
The legal reasoning in this decision is similar to that of T 63/06, in which the opponent was able to shift the burden of proof with regards to the sufficiency to the patentee. In
T 63/06 the Board found that the patentee was relying on only a weak presumption that the invention was sufficiently disclosed. The opponent was successfully able to shift the burden of proof by arguing that the skilled person would have difficult in putting the invention into practice.
The recent case
T 1299/15 is similarly a reminder that
insufficiency attacks may be applicable even to the mechanical field. As is often the case with insufficiency disputes, the issue of how much work would need to be done by the skilled person (and whether inventive endeavour would be required) was a key issue. Following on from this, if the patentee has not provided an embodiment of the claimed invention, the burden of proof is shifted to the patentee if there is serious doubt that a skilled person could perform the invention without inventive skill. Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).
