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"An Opposition Division of the EPO considers disclosures at the Gordon Research Conferences to be public" Dr. Hans-Rainer Jaenichen, Dr. Friederike Stolzenburg An Opposition Division of the EPO considers disclosures at the Gordon Research Conference to be public The Gordon Conference is one of the most famous conferences providing opportunities for scientists to exchange and discuss their scientific interests and thoughts. Although there is evidence that the intention of the organizers of the Conference is that information disclosed at the Conference should be treated confidentially, an Opposition Division of the European Patent Office (EPO) decided on April 3, 1997 that the content of an oral presentation given by a research group at the Gordon Research Conference about three months before the priority date of the opposed patent in suit is considered to be made available to the public. This decision might have a great impact on a multitude of patent applications filed after or in spite of a disclosure at the Gordon Conference and trusting on the confidential treatment of the disclosure. According to Article 54(2) EPC "[t]he state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European Patent application." Confidential disclosures do not belong to the state of the art since they are not considered to be made available to the public. However, if a disclosure made at the conference should be confidential since the regulations governing the Gordon Research Conferences include a prohibition against the free use of information presented at the Conferences without specific authorization from the contributors. This is expressed, for example, in Article VI (Section 1) of the Gordon Conference's Constitution which provides that: " There shall be no publication of information disclosed at a conference without written approval from both the contributor quoted and the Director, except where the contributor initiates release of a contribution, in which case the approval of the Director is not required." Furthermore, the Mission and Supporting Statements of the Gordon Research Conferences state the following: " To foster and promote discussion, but at the same time to protect the rights of scientific priority, it is an established requirement of each conference that NO information presented or discussed there is to be used or cited without the specific authorization of the individual(s) involved. Attributions can certainly be made, with such authorizations as personal communications, but otherwise scientific publications may not emanate from a Gordon Conference. Furthermore, the recording of lectures and discussions on tapes, video, etc. and the use of photography is prohibited." The conference in question took place in 1983 and was announced in an article in Science 219 (1983), 1095-1131. This article provided more details about the policies and guidelines governing the Gordon Research Conferences. As discussed therein, the purpose of the Gordon Research Conferences is to promote a free and unfettered discussion of scientific ideas by establishing an environment of confidentiality for the information disclosed. Accordingly, the recording of lectures, discussions, slides, video presentations or posters by any means, audio or visual (including tapes, videos, etc.), was prohibited. In particular, it was stated in said article that: " In order to protect individual rights and promote discussion it is an established requirement of each conference that no information presented is to be used without specific authorization of the individual making the contribution, whether in formal presentation or in discussion. Scientific publications are not to be prepared as emanating from the Conferences. The recording of lectures by tapes and so forth and the photography of slides are prohibited." Moreover, the above-described prohibitions were also set forth explicitly on the application forms which had to be submitted in signed form by those wanting to attend the conference. It was expressly stated in said forms that acceptance of a participant's registration constitutes his agreement to the regulations set forth in the form. Each participant of the Gordon Research Conference in question had to sign a copy of the application form. In summary, there was every indication that it was the intention of the organizers that the information disclosed at the conference should be treated confidential by the participants. Thus, such information should not belong to the prior art. Finally, according to the case law of the Technical Boards of Appeal of the EPO the fact that a report of an invention was passed on to a large, but limited, circle of persons does not of itself make the invention available to the public if all the recipients of the information about the invention were bound to secrecy, and there has been nothing to indicate that the recipients broke their pledge of secrecy (see, e.g., T300/86, not yet published in the OJ EPO). Thus, if it would have been accepted that signing the application form constitutes a secrecy agreement, the disclosure at the Gordon Conference should have been considered as not being made available to the public. However, in the case described here, the Opposition Division was not willing to accept that the participants of the Gordon Conference were bound to a confidentiality agreement. In the Opposition Division's view the purpose of the Gordon Research Conference would be incompatible "to a certain extent" with the statements concerning the prohibition to spread information received on the conference without the authorization of the participant who disclosed the information. In particular, the Opposition Division mainly based its decision on the Science article announcing the Conference. In said article it was stated that the purpose of the Gordon Research Conference is " ...to promote education and science by organizing the meeting or research scientists ... for the purpose of discussions and the free exchange of ideas, thereby stimulating advanced thinking in research at universities, research foundations and industrial laboratories." On the other hand it was stated in the same article that: " In order to protect individual rights and to promote discussion it is an established requirement of each conference that no information presented is to be used without specific authorization of the individual making the contribution, whether in formal presentation or in discussion." In these two statements the Opposition Division saw a contradiction and solved this alleged contradiction to the disadvantage of the patent proprietor by concluding "on the balance of probabilities" that the prohibition provided for in the application form is merely on printed publications, not further oral disclosure. The main reason on which this conclusion was based was the fact that the statement concerning the prohibition of spreading information in the article announcing the conference was going further than the statement in the application form for participants which read: " The recording of lectures by tapes, etc. and the photography of slide material are prohibited. Printed reference to Gordon Research Conference papers and discussion is not permitted. Authors are requested to omit references to the Conferences in any publication. Guests are not permitted to attend the Conference lectures and discussion sessions. Each member of the Conference agrees to these regulations when registration is accepted." According to the Opposition Division this statement would not suffice to establish a confidentiality agreement. Moreover, the Opposition Division based its decision on the fact that the Opponent filed several declarations of participants of the Conference in which these participants state that they did not feel bound to a confidentiality agreement by signing the application form. However, whether someone is bound by a confidentiality agreement or not should not depend on his personal, subjective feeling but should be assessed in an objective manner on the basis of the facts. The signing of the application form by the participant has to be regarded as a contract between the parties. The content of such a contract is determined, in the first place, by what is explicitly stated in the contract. Only if a certain stipulation is not explicitly put down in the contract is there room for the argument that a party, because of certain circumstances, does not feel bound by such a stipulation. However, as set forth above, the application form signed by the participants contained an explicit confidentiality agreement. Thus, the mere fact that a participant did not feel bound by this explicit confidentiality agreement contained in the application form is irrelevant for assessing whether there was an agreement or not. Moreover, even if one assumed that the statements in the application form may not apply to oral disclosures, as held by the Opposition Division, it has to be judged from the surrounding circumstances whether a confidentially agreement also for oral disclosures has to be implied as a matter of good faith. In this regard the statements in the Science article, rather than being in contradiction with the application form, as held by the Opposition Division, support the existence of, at least, an implicit confidentiality agreement also for oral disclosures. In particular, the statements in the Science article make clear that the organizers hold the view that a prerequisite for having an open discussion between the participants at the Conference is that all the participants can be sure that information disclosed at the Conference is treated confidentially. Thus, a disclosure made at the Gordon Conference should have been treated as being confidential, i.e. as not having been made publicly available. Then, however, the Opposition Division could only have concluded that a disclosure made at the Gordon conference was prior art if the Opponents could prove that there factually was a breach of confidentiality. Since this was not the case, the disclosure at the Gordon Conference should not have been taken into consideration as prior art. Although the decision discussed here is a decision of an Opposition Division and the question whether the disclosure at the Gordon Research Conference was public or not has not yet been decided by a Technical Board of Appeal, it gives rise to some concerns about how the EPO will deal with such disclosures in the future. In any event this decision should be taken into account when advising inventors who gave or intend to give a lecture at the Gordon Conference or similar research conferences. In this regard it should be noted that the currently used application form of the Gordon Research Conference contains a passage which has to be signed by the Applicant reading: " I certify that I have read the restrictions and disclaimer in the Gordon Research Conference Brochure or on the web site concerning publication and use of material presented at a Gordon Conference and the duties assumed by those presenting such material. I hereby consent to and agree to be bound by such restrictions and disclaimer." The disclaimer referred to in the Gordon Research Conference Brochure reads as follows: " DISCLAIMER To encourage open communication, each member of a Conference agrees that any information presented at a Gordon Research Conference, whether in a formal talk, poster session or discussion, is a private communication from the individual making the contribution and is presented with the restriction that such information is not for public use. The recording of lectures by any means, the photography of slide or poster material and printed reference to Gordon Research Conferences papers and discussion is prohibited. Scientific publications are not to be prepared as emanating from the Conferences. Authors are requested to omit references to the Conferences in any publication. Guests are not permitted to attend the Conference lectures and discussion sessions. Each member of a Conference acknowledges and agrees to these restrictions when registration is accepted and as a condition of being permitted to attend a Conference. Although Gordon Research Conference staff will take reasonable steps to enforce the restrictions against recording and photographing Conference presentations, each member of a Conference assumes sole responsibility for the protection and preservation of any intellectual property rights in such member's contributions to a Conference." (emphasis added) This clearly indicates that it has been and is the intention of the organizers of the Conference that any information disclosed at the Conference should be treated as confidential in order to secure the rights of the participants and that by signing the application form a participant gives his consent to a confidentiality agreement. Thus, at least for those Gordon Conferences for which the above-mentioned explicit statement was already contained in the application form, a disclosure presented at the Gordon Conference should be regarded as not being publicly available.
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