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NO – Standard of proof when ascertaining the contents of oral disclosure

24 Aug 2019

Norcape Biotechnology AS (Norcape) v. the Norwegian Board of Appeal for Intellectual Property Rights (Board of Appeal), Courts of Appeal Oslo, Norway, 22 July 2019, Case No.: LB-2018-72158-2

In May 2004, Norcape filed a patent registration for two products and one process concerning animal feed made of waste products from fish. The claimed invention combined ultrafiltration and nanofiltration to remove undesirable substances and thus created a better end-product. Patent protection was initially granted by the Norwegian Industrial Property Office.

The patent was, however, repealed as invalid by the Board of Appeal. The reason for invalidation was newly obtained disclosure which proved that the invention lacked inventive step at the time of application. A lecture held in Iceland in April 2004 had allegedly made the key elements of the filtration process available to the public.

To determine if the invention lacked inventive step, the Court of Appeal had to decide on the implications of the lecture. One of the primary issues in this regard was establishing whether a high standard of proof applies when determining the contents of oral disclosure – as adduced by Norcape.

The EPO has in several decisions indicated a high standard of proof (e.g. T 2003/08) to ascertain the subject matter of oral disclosure. (See also the newest edition of Case Law of the Boards of Appeal, from page 82). Despite the EPO’s decisions, the Court of Appeal, in this case, decided on the ordinary standard of proof in civil cases, “on the balance of probabilities”. The court firstly pointed out that it is unclear whether the EPO, through its decisions, has established a general standard, or whether the high standard of proof only applies to specific situations. Secondly, the court addressed that even if there exists such a general standard, Norwegian courts are not bound by the EPO’s decisions through EPC.

Accordingly, the standard of proof used by the EPO seems to be of little significance for Norwegian proceedings. Arguments to substantiate a high standard of proof to ascertain the contents of oral disclosure must rather be sought in the concrete circumstances of an individual case. Further, the judgement can be read as though the EPO’s decisions, in general, are of little relevance for Norwegian cases.

The Court of Appeal considered it proven that the lecture had taken place, with content as presented in a submitted PowerPoint presentation dated a few days before the lecture was held (attention was not drawn to the interrelation between the PowerPoint slides and the actual oral presentation). As Norcape’s claimed invention would be obvious for a skilled person using the lecture as a starting point (closest prior art), it was considered in lack of inventive step. Consequently, the Board of Appeal’s decision to repeal the patent was upheld.

A copy of the decision (in Norwegian) can be found here.

Headnote: Åse Røynestad Konsmo and Oda Grøner, Wikborg Rein