T 0830/90 (Secrecy agreement) of 23.7.1993

Summary of Facts and Submissions

I. European patent No. 0 163 105 was granted on 22 July 1987 in response to European patent application No. 85 104 769.6 filed on 19 April 1985 and published on 4 December 1985.

II. The notice of opposition against the patent filed by the opponent on 19 April 1988 was based on the ground for opposition set out in Article 100(a) EPC (absence of novelty or inventive step). In support of this, the opponent cited the following documents:

D1: DE-U-1 875 033 and

D2: The journal "Neues aus der Technik", No. 4, 16 August 1982, page 2.

The following documents were also submitted as evidence of the several instances of prior public use alleged by the opponent:

D3: Drawing No. 108/8/83-01 dated 21 January 1984, the property of Kvaerner Brug (Deutschland) GmbH (referred to as "Exhibit B") and filed with the grounds for opposition on 19 April 1988;

D4: Drawing No. 108/8/83-02 dated 21 January 84, the property of Kvaerner Brug (Deutschland) GmbH (referred to as "Exhibit C") and filed with the grounds for opposition on 19 April 1988;

D5: Handwritten meeting note from witness S., dated 13 April 1984 (referred to as "Exhibit A"), submitted to the Opposition Division on 12 June 1990.

The following additional documents were submitted by the appellant (patent proprietor) during the opposition proceedings:

D6: Letter from Mr H. dated 8 September 1986 to the appellant (referred to as "Exhibit P2"), received at the EPO on 18 June 1988;

D7: Undated letter from Mr D. to the appellant (referred to as "Exhibit P3), received at the EPO on 18 June 1988;

D8: Drawing No. 0000971/1 Z, the property of Deutsche MacGregor GmbH and dated 27 January 1984, works No. 160, Schiffswerft Cassens, folding covers and crosswalls; submitted at the oral proceedings on 12 June 1990 (referred to as "Exhibit B" by the appellant);

D9: Drawing No. 0000980/0 B, the property of Deutsche MacGregor GmbH and dated 18 January 1984, works No. 160, Schiffswerft Cassens, mechanism for transporting grain bulkheads; submitted at the oral proceedings on 12 June 1990 (referred to as "Exhibit C" by the appellant).

In the opposition proceedings, two of the witnesses named by the opponent were questioned during the taking of evidence at the oral proceedings before the Opposition Division on 12 June 1990.

These statements were recorded as the following testimonies attached to the contested decision as Annex I and Annex II:

T I): Testimony by Mr S., employee of the opponent (Kvaerner Brug GmbH)

T II): Testimony by Mr K., employee of the shipyard Schiffswerft Cassens GmbH.

III. The opposition led to the patent being revoked, owing to lack of novelty, by decision announced in the oral proceedings on 12 June 1990 and mailed with a written statement of grounds on 10 September 1990; the grounds were essentially that the subject-matter of Claim 1 of the contested patent had been disclosed by the patent proprietor itself in the context of a supply quotation to the shipyard Schiffswerft Cassens GmbH, the latter not having been committed to secrecy to the necessary extent, and hence had been made available to the public within the meaning of Article 54(2) EPC. Furthermore, the subject-matter of the patent had been disclosed by the shipyard to one of the patent proprietor's competitors before the priority date.

IV. The appellant (patent proprietor) lodged an appeal against the Opposition Division's decision on 30 October 1990, at the same time paying the appeal fee. The statement of grounds for appeal was received on 8 January 1991.

V. The appellant requested that the contested decision be set aside and that the patent be maintained as granted.

Claim 1 as granted is worded as follows:

"A mechanism for transporting crosswalls (bulkheads) in the holds of ships, having rollers fastened to the bulkhead (20), which in service are guided on rails on the edge (14, 15) of the coaming of the hold, and having a device for carrying over the bulkhead from a state of rest in which it is fixed with respect to the hold, into a travelling state in which it may be moved relatively to the hold, characterized in that the rollers (31, 33; 41, 43) are supported on bogies (30, 40) which are fastened to the bulkhead (20) to be movable relatively to it and in the state of rest of the bulkhead may be brought out of engagement with the edge of the coaming and moved into the hold."

VI. The arguments put forward by the appellant in support of its request can be summarised as follows:

The Opposition Division's view of statements D6 and D7 by Messrs H. and D. that they, as Schiffswerft Cassens staff, were not operating on the basis of an obligation to maintain secrecy, was not supported by the testimony of Mr K. (T II), who made no specific or substantiated statements on this matter. It was incomprehensible that the Opposition Division should infer from documents D6 and D7 that, although "it was perfectly feasible to assume that the supplier (appellant) was concerned that the technical information it supplied should be treated as confidential, there was no evidence of the existence of a precise or comprehensive pledge of secrecy apart from the wording of the letter", since "it would hardly have been possible for the firm of Cassens as the customer to accept or observe such a pledge, as this would have ... considerably hampered, if not actually prevented, the immediate execution of the project". On the contrary, it was generally true to say that information was not made available to the public if the relevant disclosure was associated with a pledge of secrecy. An agreement was not necessarily needed to establish this: such a pledge could also come into being tacitly in good faith by reason of the circumstances of the case. There was no significant difference between "treating as confidential" and "secrecy". There was therefore no need for a comprehensive, legally binding pledge of secrecy based on the principles of the law of contract or of a substance and scope directly or indirectly based on the parties' intention to enter into a contract.

It was not apparent, nor could it be deduced from the testimony of Mr K. (T II) that, between the date of placing the order (21 January 1984) and the priority date of the contested patent (27 April 1984), the subject-matter of the patent was communicated to an outsider and that there was a need for such communication. The date on which information was allegedly passed on to Mr S. (13 April 1984) was not confirmed in that testimony either.

If it was assumed, however, that the information was indeed passed on to Mr S. on 13 April 1984, Article 55(1)(a) EPC would come into play, although the specified period of six months preceding the filing of the European patent application was to be calculated back to the priority date and not the date of filing.

VII. The opponent withdrew the opposition by a letter dated 18 October 1990, i.e. before the date on which the appeal was received, and nothing more has been heard from it since.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rules 1(1) and 64 EPC and is therefore admissible.

2. Procedural matters

The opponent has withdrawn its opposition and is therefore no longer a party to the appeal proceedings (T 789/89 of 11 January 1993, to be published). Since the appeal has been filed by the patent proprietor against the revocation decision of the Opposition Division, there are no further procedural consequences. Instead, the Board of Appeal must re-examine the substance of the Opposition Division's decision, and it may set that decision aside only if the grounds for opposition do not stand in the way of maintaining the European patent. In the process, evidence produced by the opponent before withdrawing the opposition may also be taken into account (T 629/90, OJ EPO 1992, 654).

The Board does, however, have only a limited obligation to undertake an examination of its own motion (Article 114(1) EPC) with regard to prior public uses (cf. Board of Appeal decision T 129/88, OJ EPO 1993, 598), that is to say, for example, where a witness has been named by the opponent, to arrange to take evidence again to clarify contradictions if it is difficult to establish the essential facts without the co- operation of the opponent or when there are no prospects of clarification.

3. Prior art and novelty

3.1 Prior art documents

Document D1, acknowledged in the introduction to the description of the contested patent, discloses a mechanism as described in the preamble to Claim 1 in which the rollers guided on rails are immovably supported on the crosswall and, unlike in the contested patent, are not fitted with bogies which can be moved into the hold.

Document D2 does not concern a mechanism for transporting crosswalls (bulkheads) by means of rollers but movable lifting rollers for folding hatch covers on ships and therefore differs from the subject-matter of the contested patent even in terms of the kind of invention described.

The subject-matter of Claim 1 of the contested patent is therefore new by comparison with the prior art documents.

3.2 Actions constituting prior use

The actions constituting prior use which the opponent is asserting and which allegedly became public are based on meetings between Schiffswerft Cassens GmbH, the shipyard commissioned to build a new ship, and two rival sub- contractors, namely the appellant (patent proprietor) and the opponent. The meetings involved the submission of quotations to the shipyard in conjunction with transportable crosswalls (bulkheads) which do not prevent the hold from being closed with hatch covers.

The opponent considers that the following three sets of facts constitute prior public use:

First alleged prior use

As the appellant itself has revealed, at a meeting on 21 January 1984 (and the previous day by telephone) it essentially disclosed the technical concept on which the contested patent is based to Messrs H. and D. from Schiffswerft Cassens. The meeting concerned the supply of the mechanism for transporting the grain bulkheads and the hatch covers for a new ship, the order also being placed with the appellant at the same time. Documents D6 and D7, that is to say the written confirmation by Messrs H. and D., provide evidence of this.

Second alleged prior use

This action took place when a quotation was submitted by Kvaerner Brug GmbH (opponent) to Schiffswerft Cassens. According to testimony T I, the construction of the grain bulkheads and the hatch covers was discussed on 20 January 1984 at a meeting attended by, amongst others, witness S. from Kvaerner Brug and Mr H. from the shipyard, at least for part of the time. The outcome of the discussion was that the only practical solution was to roll the bulkheads. According to his statement (testimony T I), witness S. then prepared the drawings shown in documents D3 and D4 on 21 January 1984 and sent them to Schiffswerft Cassens by mail the same day (the drawing in D3 bears a handwritten note to this effect).

Third alleged prior use

According to the statement by witness S. (testimony T I), the solution principle corresponding to the contested patent was passed on for the third time at the shipyard on 13 April 1984. Witness S., for the opponent, apparently had discussions on that date with Mr K. from Schiffswerft Cassens, amongst others, on hatch covers for other new construction work. In response to an enquiry regarding the technical design of the mechanism for transporting bulkheads, the order for which had been awarded to the competitor (the appellant), Mr K. described its technical operation in detail. At the same time witness S. produced the meeting note submitted as document D5. According to testimony T I, the witness then even had a further opportunity to inspect this mechanism in the appellant's drawings which were lying there. He then had plans drawn up at his firm, Kvaerner Brug, designed to reduce the pressure on the roller pathway; these plans were later incorporated into a quotation submitted to Schiffswerft Cassens.

3.2.1 There has been prior public use of the subject-matter of a patent (cf. T 93/89, OJ EPO 1992, 718, point 8.1, T 538/89 dated 2 January 1991, point 2.3.1, unpublished) if:

(a) the use occurred prior to the filing or priority date of the contested patent (When did the action take place? Was it a prior use?)

(b) the subject-matter of the use coincides with that of the contested patent (What was used? Extent of use, subject-matter used identical in essence to the subject-matter of the contested patent) and

(c) the circumstances of the use are such that the subject- matter used has been made available to the public and has therefore become public (How, where and through whom did the prior use occur? Nature and circumstances of the prior use).

3.2.2 First alleged prior use

In its rejoinder to the opposition dated 16 June 1988 (page 11, point 2) the appellant explicitly stated that it essentially disclosed the invention on which the contested patent is based to Schiffswerft Cassens on 21 January 1984. This is also confirmed by the content of documents D6 and D7. The Board therefore holds that the first action constituting prior use occurred before the priority date and that the subject-matter of the prior use and that of the contested patent are identical in essence; the aforementioned criteria (a) and (b) are therefore satisfied.

The circumstances and the nature of the prior use (criterion (c)) are undisputed insofar as the location (Schiffswerft Cassens) and those involved in the action are concerned (the appellant as sub-contractor and the managing director and/or employees of the customer firm, Schiffswerft Cassens).

What is in dispute is whether the disclosure of the subject- matter of the contested patent was associated with a secrecy agreement when the order was placed and whether or not the Schiffswerft Cassens employees present at that event are therefore to be counted as the public.

In accordance with the Guidelines for Examination in the EPO, D-V, 3.1.3.2, the Board takes the view that such a disclosure is not public, i.e. has not been made available to the public, if

(a) there is an express or tacit agreement on secrecy and

(b) it has not been broken.

In the Board's view, whether or not a technical concept revealed in an offer or when an order is placed is made available to the public will depend on the case concerned.

In this case, the managing director (Mr H.) and the manager of the Schiffswerft Cassens shipbuilding office (Mr D.), both of whom were present when the order was placed on 21 January 1984, made the following points in the letters comprising D6 and D7 submitted by the appellant:

"The MacGREGOR representatives had explicitly pointed out that the information received from Deutsche MacGREGOR was to be treated as confidential, in particular in discussions with competitors. This was a matter of course when presenting new technical concepts" (the words of Mr H. in D6).

"For me it was a matter of course that the information received from Deutsche MacGREGOR was to be treated as confidential, in particular in the event of a discussion with competitors. The MacGREGOR representatives had also explicitly pointed this out" (the words of Mr D. in D7).

This confirms that confidentiality had been a matter of course for Messrs H. and D. and hence for the firm of Cassens, i.e. that it met with their approval.

These passages in documents D6 and D7 have not been questioned either by the Opposition Division or by the opponent. Neither does the Board see any reason to doubt their correctness. Nor has it been alleged that there was any objection to the appellant's instruction at that time. Even though consent to the confidentiality proviso was not given verbally at that time, nevertheless in view of the comparable interests of the parties involved in a joint technical development, it must have been a logical (implicit) conclusion. The other evidence does not indicate to the contrary either. Testimony T II by witness K., an employee at the shipyard, merely contains statements referring to the confidentiality of the second "prior use". Witnesses K. and S., whose testimony has been heard, did not attend in person the discussions mentioned in documents D6 and D7, which means that they were naturally unable to comment on any agreement on confidentiality.

Even if only on the above grounds, the Board sees no reason to doubt that, in the case of the first prior use, there was a confidentiality agreement to the effect that the contents of discussions and/or drawings should not be passed on and were therefore to be kept secret. This applies all the more since the drawings submitted by the appellant (D8 and D9) bear clearly visible stamps referring to Sections 18-20 of the German law prohibiting unfair competition (UWG) and Section 823 of the German Civil Code (BGB), indicating the existence of a secrecy proviso which was undoubtedly noted by the parties concerned and to which no objection was made. Contrary to the view of the first instance (cf. points 11.5 and 11.6 of the contested decision), it is not immaterial under patent law that these stamps refer to the German law prohibiting unfair competition, which governs the observance of fairness in competition, and to Section 823 of the German Civil Code, which governs liability for damages on the grounds of actionable tort (cf. Singer R., European Patent Convention, marginal note 6 to Article 54, according to which the obligation to maintain secrecy may arise from the circumstances of the case in accordance with the general principle of good faith). The stamps in this case are an unequivocal indication that the appellant did not wish to disclose the content of the drawings unconditionally.

Secrecy of this kind, which may not be verbally agreed but is nevertheless implied in business dealings between the business partners concerned is to be deemed sufficient to rule out the public nature of any disclosure. Contrary to the view of the first instance in points 11.2 and 11.4 of the contested decision, there does not necessarily have to be evidence "of an agreement which is explicit and specific (based on a patent application)". Evidence of logical, i.e. implied, consent suffices. This consent is adequately specified if, as in this case, it relates to the essential features of an invention.

In the contested decision the view was also taken that confidentiality associated with a pledge of secrecy "is not in fact really possible and is not compatible with the purpose of the contract or the interests of the parties to the contract" in the present case because of the particular situation, namely plans to execute the project at a shipyard.

The files give no indication that it was impossible de facto to safeguard confidentiality, nor is the Board able to rule this out on the basis of its own findings. In line with general experience, it must be assumed that such an agreement is observed at least as long as there is a common concern for secrecy. Such concern will last at least for the period required to safeguard the interests of the business partners. These interests may, for example, include the co-operation phase in which there is still no protection in law, e.g. through the patent system, or in which there is still joint further development of the new mechanism. According to witness K. in testimony T II (page 4, paragraphs 2 and 3), Schiffswerft Cassens was also involved in solving the problem in question, and it also contributed technical know-how. The shipyard must therefore be assumed to have had not only consideration for the interests of its business partner but also an interest of its own in secrecy apart from the placing of the order, at least during the further development phase and until the mechanism began to be installed in the vessel. Contrary to the view of the first instance, therefore, the purpose of the contract cannot be seen to be contrary to the obligation to maintain secrecy.

Testimony T II by Mr K. contains no indication of the time when the mechanism claimed actually began to be constructed and installed at the shipyard. It cannot automatically be assumed that the work in question was indeed carried out as early as the relatively short period between the placing of the order (21 January 1984) and the priority date of the contested patent (27 April 1984). For this reason it can likewise not be automatically assumed that the circumstances which led the parties concerned to treat the offer as confidential lapsed before the priority date of the contested patent or that, in the course of performance of the contract, it had to be expected that the essence of the contested patent would be passed on to third parties.

The question also arises as to whether a breach of confidentiality is to be deemed proven by the statement by witness K.

The shipyard employee Mr K., acting as a witness, stated in his testimony T II on the subject of the transmission of the solution in question that he definitely spoke to third parties about it; he mentioned the charterer of the vessel in question by name. He also said that the shipowner had been kept informed of orders placed roughly between one week and ten days following the placing of the order, or even sooner.

The wording of the testimony is, however, so vague and fragmentary on this point that there is no conclusive proof that the technical information in question was actually passed on (cf. point 3.2.1 above).

3.2.3 Second alleged prior use

The above comments apply likewise to the second prior use alleged. Drawings D3 and D4 contain a clearly visible secrecy proviso, reference being unequivocally made to business secrets and Article 17 et seq. of the German law prohibiting unfair competition (UWG). In view of the technical co- operation involved, the opponent and Schiffswerft Cassens had parallel interests with respect to a future order. Here again it has not been shown that the people at Cassens objected to the secrecy proviso. Yet that would have had to be the case here if Cassens had not wished to be bound by it. It is, instead, to be assumed that even the discussion on 20 January 1984 was subject to such a proviso. This conclusion is also supported by the fact that Cassens assumed there was an obligation to maintain secrecy "as a matter of course" under similar circumstances in conjunction with the action allegedly constituting the first prior use.

In the Board's view, the evidence submitted in support of the second alleged prior use is likewise insufficient to satisfy criterion (c) for the existence of prior public use beyond any doubt (cf. point 3.2.1 above).

3.2.4 Third alleged prior use

The date (13 April 1984) inserted on the meeting note D5 by witness S. was not confirmed by the other party to the discussion, witness K. (see testimony T II), who merely made very vague comments on this. For this reason the testimonies on this point do not provide sufficient confirmation that the subject-matter of the contested patent was the subject of a discussion between the two witnesses shortly before the priority date (27 April 1984) (criterion (a)).

Furthermore, this discussion has not been proved to be public. Testimony T I (page 6) indicates that witness S. used the information from the discussion to have plans drawn up at his company (the opponent, Kvaerner Brug) in order to use them as the basis of a later offer to Schiffswerft Cassens for a different project. It therefore seems unlikely that the opponent had any interest in passing information on this on to third parties, and hence possibly to competitors, during the continuing development phase of these mechanisms.

The Board finds that the evidence submitted in support of the third prior use alleged is likewise insufficient to demonstrate prior public use.

3.2.5 Following the withdrawal of the opponent from the proceedings, in view of its limited duty to examine the matter of prior public uses of its own motion (cf. point 2 above), the Board holds that, given the considerable amount of time that has elapsed since the events in question and the fact that evidence has already been heard, there is little prospect of clarifying any outstanding matters by taking evidence again; there is even less prospect of clarification, given that in the parallel proceedings before the German Federal Patent Court (decision 7 W (pat) 112/87 dated 16 November 1990), when withdrawing its opposition the opponent stated that the witnesses were unable to reply to the questions set out in the order for evidence "on behalf of the opponent".

4. Since the evidence of prior public use of the mechanism as claimed in Claim 1 of the contested patent is incomplete and this therefore has to be disregarded as prior art, it is superfluous to discuss the question of the non-prejudicial nature of the disclosure asserted by the appellant in respect of the third alleged prior use on account of an evident abuse pursuant to Article 55(1)(a) EPC and the related question of the relevant date for calculating the six-month period.

5. Inventive step

Document D1, acknowledged in the preamble, describes a mechanism for transporting bulkheads with immovable rollers. Document D2 discloses movable lifting rollers for folding hatch covers on ocean-going vessels; these rollers have nothing to do with the actual transportation of the hatch cover on the edge of the coaming but "are required only in a very specific operating phase of the hatch covering process". In points 3 and 4 of its rejoinder to the opposition dated 16 June 1988, the appellant describes the operation of the lifting rollers, indicated in D2 only with the word "lifting", as involving the lifting roller "running up a ramp provided in the region of the longitudinal ends of the hold and, as a result, a turning moment being exerted on the hatch cover, causing (the hatch) to fold". In its pleadings dated 10 October 1988 (page 2, point 3) and 13 December 1988 (page 2, point 2) even the respondent did not seriously question this mode of operation of the lifting rollers; instead, it is acknowledged that according to D2 "a roller set is brought out of engagement with a rail by moving it into the region of the hold". The lifting roller known from D2 is therefore evidently not used for transportation at all but only to fold the hatch cover. The known movable rollers therefore serve a different purpose and fulfil a different function from the rollers used to transport the crosswalls in the subject-matter of the contested patent. D2 is therefore unable to provide the skilled person with any clue that might lead him to the solution as claimed.

The Board therefore concludes that the subject-matter of Claim 1 is not obvious from the prior art. It therefore involves an inventive step pursuant to Article 56 EPC, and the subject-matter of Claim 1 is patentable pursuant to Article 52(1) EPC.

6. There are no objections on formal grounds to dependent Claims 2 to 12; they contain advantageous developments of the invention as claimed in Claim 1 and are therefore likewise patentable.

The patent may therefore stand in the scope of the documents as granted.

ORDER

For these reasons it is decided that:

1. The contested decision is set aside.

2. The patent is maintained as granted.