The Federal Court of Justice applies its own standards on "novelty" (art. 54(2) EPC)
The issue in dispute was whether a system for conditioning semiconductor wafers sold and delivered by the patent owner to a customer approximately two years before the priority date of the patent in suit was detrimental to the novelty of the patent as "public prior use".
The Federal Patent Court has assumed this. The Federal Court of Justice (BGH) assessed this differently and formulated it as a guiding principle:
"Delivery, installation and use of a system at a purchaser's site do not readily establish a sufficient likelihood that arbitrary third parties will examine the system and thereby obtain knowledge of the invention."
The BGH first cites its own case law (judgment of December 9, 2014, ref.: X ZR 6/13 - "pressing gripper", and judgment of November 8, 2016, ref. X ZR 116/14), according to which prior use is obvious if there is not only the theoretical and remote possibility that any third party, and thus also persons skilled in the art, may obtain reliable and sufficient knowledge of the invention. This is to be assumed under normal circumstances if a device according to the invention has been offered or supplied to a third party. In the case decided, however, the BGH considered only a theoretical or remote possibility of knowledge to be given.
Several factors were decisive for this assessment: The customer's employees were unable to gain knowledge of the internal structure of the patented cooling and temperature control system during normal operation of the plant before the priority date. They were not allowed to make any changes to the device except for changes to the measuring software. Also, a closer examination of the device by third parties was not possible without the buyer's consent. The BGH was also convinced that there was no sufficient probability that employees of the customer would have attempted to gain knowledge of the functioning of the patent-compliant cooling system up to the priority date of the patent in suit or that they would have allowed third parties access to the system for this purpose. Installation, maintenance and repair of the system were the sole responsibility of the patent owner. In order to verify the patent-compliant functioning, the system would have had to be damaged and then repaired.
The decision is remarkable for various reasons and seems to contradict the case law of the European Patent Office. There are two issues to be differentiated: Firstly, what does "the public" mean, and in particular, do the customer's employees belong to this "public"? Secondly, what has been made "accessible to the public" by the supply of the plant against the background that the essential components of the invention were only recognisable after damage?
On the first issue, the case law of the BGH (most recent ruling of November 8, 2016, Ref.: X ZR 116/14, para. 25) states very clearly:
"The sale of an object which anticipates the teaching of the patent in suit, without establishing a duty of secrecy, does not in itself lead to obviousness. Rather, the not merely theoretical possibility must be opened up that any third party, and thus also persons skilled in the art, may obtain reliable and sufficient knowledge of the invention".
The case law of the Boards of Appeal of the European Patent Office deviates considerably from this: if there is neither an explicit nor an implicit non-disclosure agreement, the customer is part of the public. This is stated in the Board of Appeal decision T 2210/12 of October 7, 2016 under point 1. 2.2 concerning a system supplied to VW:
"Since the company VW itself already constitutes part of the public, it is irrelevant whether further third parties had access to the factory sites or not."
The Board of Appeal decision T 2272/11 of April 5, 2016 comes to the same conclusion. Already on this first issue, there is a clear difference between the case law of the BGH and the Boards of Appeal.
On the second subject, the starting point and the continuously cited basis for decisions of the Boards of Appeal of the European Patent Office is the opinion of the Enlarged Board of Appeal G1/92 of 18.12.1992, which states on page 3:
„Where it is possible for the skilled person to discover the composition of the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art.
There is no support in the EPC for the additional requirement referred to by Board (…) that the public should have particular reasons for analysing a product put on the market, in order to identify its composition or internal structure.”
On page 4 it continues:
„The introduction of such an additional requirement would remove a commercially available and reproducible product from the public domain. It would mean an unfounded deviation from the principles applied in respect of the other sources of the state of the art as defined in Article 54 (2) EPC and it would obviously represent an element of subjectivity leading to uncertainty in applying the concept of novelty as defined in this Article.”
These statements by the Enlarged Board of Appeal seem to diametrically contradict the BGH point of view - also - as justification, that the purchaser of the plant for conditioning semiconductor wafers had not had sufficient reason to analyse the mode of operation. On closer analysis, however, this conclusion is not compelling: The BGH decision mentions another aspect, namely that the employees of the buyer were not allowed to make any changes to the system except for changes to the measuring software. Installation, maintenance and repair of the system were the sole responsibility of the patent owner. Even if the BGH decision on this aspect is not completely clear, the assumption is justified that the patent owner only maintained the warranty for the plant on the condition that it was also maintained by the patent owner and that the employees of the buyer were accordingly prohibited from dismantling and damaging it.
However, this does not seem to completely eliminate the conflict with the case law of the Enlarged Board of Appeal, because the patent owner delivered an installation to a customer without a non-disclosure agreement and it was objectively possible to examine the installation and to recognise the function according to the invention. Dismantling the system at the customer may have led to the loss of warranty claims; however, the BGH decision does not clearly state that the dismantling was prohibited for legal reasons.
This constellation is quite different from that of an explicit or implicit non-disclosure agreement. If a delivery is made under such an agreement, the supplier (in this case the patent owner) has not willingly transferred the delivered object into the "public domain", and a violation constitutes a breach of contract.
In summary, the BGH applied a very favourable and generous standard for the patent owner in the decision. A discussion of the case law of the Boards of Appeal of the European Patent Office would have been desirable.