The free evaluation of evidence of prior use (T 0042/19)

Can a Board of Appeal overturn a finding of fact at first instance? Boards of Appeal case law on this question currently conflicts (IPKat). The question comes down to how much the principle of the free evaluation of evidence restricts the competency of the Boards to overturn findings of fact. The recent decision in T 0042/19 found merit on both sides of the argument, but concluded that the power of Boards of Appeal to overturn a finding of fact by a first instance department was generally curtailed in view of the principle of the free evaluation of evidence. 

Legal background - The free evaluation of evidence

Under the principle of the free evaluation of evidence, all types of evidence are given equal weight. Witness testimony heard at first instance can not be considered superior or inferior to documents considered on appeal. Additionally, according to the principle of the free evaluation of evidence, the deciding bodies of the EPO are entrusted with evaluating evidence and applying the appropriate standard of proof. EPO departments thus have the power to assess the credibility of evidence on a case-by-case basis (CLBA, III-G, 4.1).

Current Boards of Appeal case law conflicts on whether a Board of Appeal may review findings of fact from first instance (Case Law of the Boards of Appeal (CLBA), III-G, 4.2). According to the majority view, the principle of the free evaluation of evidence restricts the power of the Boards. Particularly, according to T 1418/17, a consequence of the principle of free evaluation of evidence is that Boards of Appeal should only overrule a finding of fact at first instance in very limited circumstances. The Board must find that the first instance department disregarded essential points, considered irrelevant matters or "violated the laws of thought" (e.g. in the form of logical errors or contradictory reasoning) (Cf. T 1057/15,  T 1069/14). 

By contrast, the dissenting decision in T 1604/16 found that the principle of the free evaluation of evidence does not limit the competency of the Boards of Appeal to review appealed decisions in full, as provided in the explanatory remarks to Article 12(2) RPBA 2020 (IPKat).  

Striking the middle ground

In T 0042/19, the patent in question (EP2846857) related to an injection device. The Opponent submitted evidence of alleged prior use in the form of the insulin injection pen (GensuPen). The Opponent argued that the claimed invention lacked novelty in view of the prior use of the GensuPen (Article 54(2) EPC). The Opposition Division (OD) found that the alleged prior use was not sufficiently proven. The question before the Board of Appeal was whether the OD had erred in this finding. 

Stealth investigations

The Board of Appeal first had to grapple with the question of whether it was even permissible for them to review a finding of fact by the Opposition Division. On this question, the Board of Appeal cited with approval the reasoning in T 1604/16, providing that the Boards of Appeal have the power and duty to overrule decisions if there were deficiencies in the fact-finding process of the first instance department (IPKat). However, the Board of Appeal also agreed that the competency of the Boards of Appeal to review findings of fact should be understood in the context of the principle of the free evaluation of evidence. Particularly, the Board of Appeal noted that since Boards of Appeal are not obliged to re-hear evidence, "it would be wise" for the Boards to respect the freedom of first instance departments to judge the evidence. As such, Boards of Appeal should be wary of overruling a finding of fact from first-instance, and must "convincingly demonstrate where the competent division erred" (r. 3.5). 

The Board of Appeal in T 0042/19 thus aimed for a middle ground between the dissenting decisions T 1604/16 and T 1418/17 (r.3.5). The Board of Appeal concluded that the test provided by T 1418/17 was broadly appropriate, according to which the circumstances whereby a Board of Appeal may overrule a first instance department's finding of fact should be limited to when i) essential points were disregarded, ii) irrelevant matters were considered or iii) there was a violation of the laws of thought.

Turning to the matter at hand, the Board of Appeal in T 0042/19 found no issues with the conclusion of the OD regarding the evidence of prior use.  The evidence of prior use included a statement from a Ms Simon. Ms Simon testified that, prior to the priority date, she had received a GensuPen injection device. The Patentee argued that the GensuPen had only been given out as part of a trial under conditions of confidentiality (Cf. IPKat). 

The Board of Appeal agreed with the OD that the prior use had not been sufficiently proven. First, no background information was given about the mysterious Ms Simon. For both the OD and the Board of Appeal, the statement also did not prove that a member of the public could have acquired a GensuPen. The Board of Appeal thus found no reasons to overrule the finding of the OD. 

Final Thoughts

The principle of the free evaluation of evidence was also recently considered by the Enlarged Board of Appeal in G 2/21 (IPKat). Part of the question referred to the EBA in G 2/21 was whether a Board of Appeal is required to deviate from the principle of free evaluation of evidence in respect of post-published data if these data are the only evidence for a purported technical effect (i.e. if without the data, a technical effect would not be "plausible" from the application as filed). The EBA noted that the principle of the free evaluation of evidence allowed a Board of Appeal to decide according to its own discretion and its own conviction (r. 30). The EBA went on to conclude that the "plausibility test" is not an exception to the free evaluation of evidence, but merely a catch-word signalling doubt with respect to an asserted technical effect (r. 58) (IPKat). In G 2/21, as in the present case, the overarching principle that EPO departments must be able to assess evidence case-by-case was reaffirmed. 

Further reading

Boards of Appeal are competent to overturn a finding of fact at first instance (T 1604/16)

Confidentiality restrictions around clinical trials and prior public use (T 0670/20) 

Proving the existence of confidentiality agreements and the celestial teapot - T 2037/18 

Image credit: B Kliban