- This opposition appeal is about sufficiency of disclosure. Claim 1 is for a process including a step of "fibrillating the cellulose fibres in the presence of the at least one filler and/or pigment until there are no fibres left and only primary cellulose fibrils are obtained" The opponent submits that the patent does not teach how to carry out this step that it is unknown how to evaluate that "there are no fibres left" as well "only primary cellulose fibrils are obtained". The OD had agreed with this argument and had revoked the patent for insufficient disclosure.
- " the Board is of the opinion that the objection of insufficiency of disclosure raised by the respondent [opponent] and shared by the opposition division is not substantiated by verifiable facts and that therefore the respondent [opponent] has failed to discharge its burden of proof"
- The Board: "Step (d) of claim 1 requires fibrillating the cellulose fibres in the presence of at least one filler and/or pigment until there are no fibres left and only primary cellulose fibrils are obtained. This however does not require that the elements of the suspension are detected and that their dimension is measured. In fact, claim 1 does not comprise a step of measuring the dimension of the elements of the suspension, so that the absence in the patent of a specific indication of the dimension of the primary fibrils and of a method for measuring such dimension does not affect a priori the reproducibility and thus the sufficiency of disclosure of the claimed invention."
- I think this argument can in fact be applied generally to all claims specifying parameters of a product.
- " It is noted that the patent specification acknowledges with reference to the background art that the fibrillation process may be continued until there are no fibres left and only fibrils of nano size remain (see paragraph [0010]). That this is generally possible has not been contested by the respondent or by the opposition division."
- " [The opponent] has not shown that any of the examples of the patent are not workable or are such that step d) cannot be carried out or can only be carried out with undue burden.
- Therefore, " the sufficiency of disclosure of the invention of the opposed patent cannot be denied"
- The Board also notes that the opposition division had incorrectly "put the burden of proof of sufficiency of disclosure on the appellant [patentee] during opposition proceedings" " The decision of the opposition division is therefore already for this reason incorrect."
- The Board also gives reasoning as to " The parties are in dispute over whether in the case at hand the burden of proof has been shifted from the respondent/opponent to the appellant/patent proprietor." This has to do with incorrect optical microscopy photographs filed by patentee.
EPO T 0055/18 - link
XI. Independent claim 1 according to the main request, i.e. according to the patent as granted, reads as follows:
A process for the production of nano-fibrillar cellulose suspensions, characterized by the steps of:
(a) providing cellulose fibres in the form of a suspension;
(b) providing at least one filler and/or pigment;
(c) combining the cellulose fibres and the at least one filler and/or pigment;
(d) fibrillating the cellulose fibres in the presence of the at least one filler and/or pigment until there are no fibres left and only primary cellulose fibrils are obtained.
Reasons for the Decision
1. The appealed decision - Burden of proof
1.1 The appellant argues that according to the case law in opposition proceedings the burden of proof lies with the opponent to demonstrate that the requirements of Article 83 EPC are not met. The opposition division instead put the burden of proof on the patent proprietor and based its decision on this, so that the decision of the opposition division is wrong.
1.2 The Board agrees with the appellant.
It is established jurisprudence of the Boards of Appeal that an objection of lack of sufficient disclosure presupposes that there are serious doubts substantiated by verifiable facts. The burden of proof is upon the opponent to establish, on the balance of probabilities that a skilled reader of the patent, using his common general knowledge, would be unable to carry out the invention (see the Case Law of the Boards of Appeal, 8**(th) Edition, 2016, II.C.8).
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