This case concerns an opposition based on Article 100(a) wherein a lack of novelty was said to exist based on inter alia public prior use for which the opponent offered a witness to be heard.
According to Article 117(1)(d) hearing a witness is considered a means of giving or obtaining evidence in proceedings before the EPO. Under Rule 117 the EPO shall take a decision in the case it considers it necessary to hear a witness.
The Opposition Division came to the conclusion that the alleged prior use was not sufficiently substantiated as to the issues what was made available to the public and when and how it was made available. The witness was not heard.
Using the words of the Board of Appeal : The Opposition division has apparently either ignored or overlooked the Opponent's offer to hear the witness named in the notice of opposition on certain details of this alleged prior use.
The Board then explains the principles regarding witness hearing with respect to public prior use :
There is normally no need for the competent department to hear a witness on an alleged prior use, if it does not evaluate differently the facts and arguments brought forward by the Opponent in support of the claimed prior use.
There is also normally no need to hear a witness to testify that an alleged prior use was made available to the public, if this alleged prior use is cited only in support of lack of novelty and the department of the EPO is of the opinion that the alleged prior use is in fact not a novelty destroying state of the art, since establishing availability to the public in that case would have no influence on the decision to be taken.
By contrast, in the present case the Opposition division was of the opinion that not only the claimed public prior use was not established but also this public prior use, even if established, would not be a novelty destroying state of the art, because the feature [..] was not disclosed therein.
However, the Opposition division did not consider the Opponent's offer to hear the same witness on these two issues.
In other words, the witness was offered to testify on those facts which specifically concerned the questions of "when and how" and "what" was available to the public, i.e. questions upon which the decision turned.
Given that hearing witnesses is one of the means of giving or obtaining evidence according to Article 117 EPC 1973, in ignoring the Opponent's request to [..] the witness, even if due to an oversight, the Opposition division has disregarded oral evidence offered on these two issues and thus, infringed the Appellant's right to be heard (Article 113(1) EPC 1973). This constitutes a substantial procedural violation.
The decision under appeal is set aside and the case is remitted to the Opposition Division.
Catchword:
If a request is made by an opponent to hear a witness on an alleged public prior use and on the disclosure of a certain feature by this prior use, the competent department of the EPO must as a rule grant this request before deciding that the alleged public prior use is neither established nor a novelty destroying state of the art because the feature in question is not found to be disclosed therein.
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