EUIPO Case Law Laboratory Disclosure of Designs (Internet) Shane Smyth - FRKelly © FRKelly European Patent and Trademark Attorneys

© FRKelly European Patent and Trademark Attorneys Do we need to reinvent the wheel? What about the Patent system? Are there issues specific to Design law or can we comfortably embrace protocols/guidelines which already exist under, for example, the European Patent system? © FRKelly European Patent and Trademark Attorneys

© FRKelly European Patent and Trademark Attorneys Patent System (EPO) Principle of “free evaluation of evidence”. This means that each piece of evidence is given an appropriate weight according to its probative value, evaluated having regard to the circumstances of each case. © FRKelly European Patent and Trademark Attorneys

RED BULL CASE Soft Drink Bottle R 25/2014-3 - Paragraph 20 “The evidence provided by the invalidity Applicant must be considered in its entirety. Indeed, if some of these elements considered on their own may be insufficient to demonstrate the disclosure of a prior Design, the fact remains, when combined or in conjunction with other documents or information, they can contribute to the proof of disclosure”. © FRKelly European Patent and Trademark Attorneys

© FRKelly European Patent and Trademark Attorneys PATENTS & DESIGNS Are we already moving in different directions? Patents: The standard for addressing the circumstances is the balance of probabilities. v Designs: PHIALS Case – the disclosure cannot be proved by means of probabilities. © FRKelly European Patent and Trademark Attorneys

Board of Appeal (EPO) T0286/10 BOUYGUES – 21 MAY 2014 Did not agree with submissions that prior publication through internet disclosure must be proved beyond a reasonable doubt. No basis for a different regime of evidence than that which governs prior art disclosures in general. © FRKelly European Patent and Trademark Attorneys

© FRKelly European Patent and Trademark Attorneys BURDEN OF PROOF Should the burden of proof be shifted to the Design holder at a relatively low level particularly when the information should be in possession of the Design Holder. Simple statement of unreliability v Evidence to support claim of unreliability © FRKelly European Patent and Trademark Attorneys

Need for Independent Experts Do participants accept that on occasion, the evidence vis-a-vis the date of a document can be of such a technical nature that an assessment with an acceptable degree of rigour would, in principle, require an independent technical investigator? Statement made by Third Board of Appeal in BANGLES Decision (R779/2015-3) © FRKelly European Patent and Trademark Attorneys