17 August 2023

T 1634/17: evidence needed to show what was disclosed during an oral presentation

The recent decision T 1634/17 confirms the strict approach taken by the EPO when considering whether an oral presentation anticipates a subsequently filed patent application, and the  high burden of proof on an opponent in EPO opposition proceedings who is seeking to invalidate a patent on the basis of such an oral disclosure.

European patent no. 2550363 was granted to Regeneron Pharmaceuticals Inc, with claims relating to a protein ADAM6 and its role in fertility in male mice. The patent was opposed by Kymab, and at first instance the Opposition Division (OD) agreed with Kymab that the claims as granted lacked inventive step based on a presentation given by one of the inventors, Dr Murphy, more than a year before the earliest priority date of the patent. The key documents provided by Kymab as evidence of the presentation were document 11 (D11), and a related document referred to as D11’.

D11 was a set of PowerPoint slides said by Dr Murphy to have been shown during the presentation. Dr Murphy acknowledged that neither hard copies nor electronic copies of the slides were distributed at the presentation. The OD held that D11 was not state of the art because it was not “finally proven beyond reasonable doubt” that the set of slides filed as D11 was the actual set of slides shown at the presentation given by Dr Murphy.

D11’ was a summary of what was said to have been learned from the presentation, compiled by Professor Allan Bradley, founder of Kymab and an attendee at the presentation. Professor Bradley circulated the summary amongst his colleagues a few days after the presentation. The OD held that D11’ contained “features of D11 which had been proven to be publicly disclosed” and thus could form state of the art relevant to novelty and/or inventive step.

Regeneron submitted in appeal proceedings that the OD was incorrect in its assessment of what had been disclosed, and that neither D11 or D11’ should form state of the art. The Board of Appeal agreed, considering in particular that the relevant question was what was conveyed to the public, not just what was presented or shown.

The Board agreed with the OD that D11 was not state of the art, referring to the earlier decision T 1212/97, which states that a lecture cannot be evidenced by the lecturer alone, as they hold a different position to a member of the audience. The Board noted that according to Dr Murphy the 58 slides reproduced in D11 had been shown in less than an hour, and the Board commented that the manner or speed of presentation may affect the comprehensibility of a lecture and the amount of material/information covered by the lecture may be another factor to affect said comprehensibility.

Upon considering the evidence on file, including a number of declarations from other attendees of the presentation, the Board also held that D11’, or any other documents on file, did not convincingly show beyond reasonable doubt what was actually disclosed because they were not contemporary written notes taken during Dr Murphy’s presentation. For example, it was noted that D11’ had been produced after several subsequent conversations, discussions and meetings between Professor Bradley, Dr Murphy, and/or other attendees of the presentation, and thus it could not be ruled out that it may have contained additional information beyond that actually conveyed by Dr Murphy during the presentation itself.

As D11’ was not contemporaneous evidence of what Dr Murphy’s presentation disclosed to the public, and the slides of D11 were also not considered state of the art, neither of these documents could be taken into account for the assessment of novelty and/or inventive step of the claim requests. The Board overturned the decision of the OD, the opposition was rejected, and the patent upheld as granted.

This decision is a useful reminder of the high standard that the EPO requires to be met in order to establish what was actually disclosed in an oral presentation. Evidence from the presenter alone is unlikely to be enough, and supporting evidence from attendees may need to include contemporary notes actually taken by the attendees during the presentation.