Reported by Dr. Stefan V. Steinbrener
Disclosures on the Internet become increasingly important and can no longer be ignored for a serious evaluation of the existing prior art although, due to the peculiarities of the medium, such evaluation is faced with specific complications. In particular, issues of public availability and publication date may cause difficulties and provoke controversies among parties as to the proper standard of proof. In view of a small number of isolated decisions dealing with these problems, the case law of the EPO Boards of Appeal does not yet seem to have been firmly established. Hence, any additional clarifications are extremely useful.
This may have been the reason for a study committee for intellectual property of the Confederation of Netherlands Industry and Employers VNO/NCW to ask two of its members, Koninklijke Philips Electronics N.V. and DSM IP Assets B.V., to create test cases regarding the question of whether and, if so, under which conditions, documents placed deliberately on the Internet constituted prior art within the meaning of Article 54 (2) EPC 1973.
Consequently, after a patent had been granted by the EPO to Philips for a display device in parent and divisional applications EP 00200326.7 and EP 02077838.7, respectively, DSM filed two oppositions. In the parent case, the opposition was based on lack of novelty and/or inventive step with respect to the content of web pages allegedly found before the filing date in the World Wide Web with – or without – the aid of a search engine, as was certified by notarial records in some, but not all cases. For the divisional, lack of inventive step was argued, the main focus being on public availability of e-mails sent either encrypted or unencrypted before the filing date, as was again certified by notarial records. In the parent case, the opposition division maintained the patent in amended form, whereas in the divisional case the opposition was rejected.
The parties adversely affected by these decisions filed an appeal, i.e. the patentee and the opponent in the parent case, and the opponent in the divisional case. Apparently, the parties had informed the EPO in first instance proceedings that these were “dummy” cases, the Board, however, was left in the dark about their very nature and, from various circumstances in the file indicating a substantial level of co-operation between the parties, became suspicious of the admissibility of the oppositions, in particular having regard to the requirement that, in accordance with the Enlarged Board's ruling in G 3/97, opposition proceedings must be contentious. Nevertheless, in the end the Board convinced itself that this requirement was fulfilled since, despite their co-operation in creating the cases, the parties defended mainly opposing positions. Whether this was within the framework of a test case and in order to obtain answers from the Board to certain specific legal questions was considered immaterial in this regard.
As to the substance in the parent case (T 1553/06), notarial records certified that two documents I1 and I2 could be found before the filing date on the Internet at certain dates and times after entering certain strings of keywords for each of them in a public search engine. As both parties agreed that the documents existed on the internet at the dates and times indicated in the notarial records, the Board considered this fact to have been proven beyond reasonable doubt in the present case, and saw no need to address the more general question as to the proper standard of proof.
Because the Board did not consider the notary as a member of the public, the sole reason for forming prior art might then be due to the fact that I1 or I2 existed on the Internet. In the Board's view, availability in the sense of Article 54 (2) EPC involved two separate stages: availability of the means of disclosure, and availability of information which was accessible and derivable from such means. With respect to the former, the Board assumed that if the public, in practice, remained unaware of the existence of a certain means of disclosure or had no access to the means of disclosure, then there was no reason to deny a patent. While following opinion G 1/92 of the Enlarged Board of Appeal in that subjective elements, as e.g. the degree of burden involved, were in principle irrelevant to the determination of what constituted the state of the art, the Board nevertheless found that the fact alone that a document existed on the World Wide Web did not go beyond a mere theoretical accessibility. In order to conclude that the document was indeed available to the public, a practical possibility of having access to it was decisive. Hence, it had further to be established that direct and unambiguous access to the document by known means and methods was possible.
Since the identical URL of both documents was known to the then web search engine AltaVista, the question boiled down to whether a member of the public had direct and unambiguous access to this URL. Only guessing the URL would in general not provide direct and unambiguous access to the corresponding web page because it was normally not straightforward to arrive at the correct result for a specific URL by a guessing approach.
Given that the documents could be found on the basis of keywords, they must have been indexed. However, this would also not automatically guarantee that direct and unambiguous access to a document was possible as it was conceivable to store a document on the web by only indexing it with keywords unrelated to the essence of the content of the document. Furthermore, another necessary condition for accessibility was that a
document stored at a given URL on the Web remained there for a sufficiently long period of time, which had to be assessed on a case-by-case basis.
In the light of these considerations, the Board proposed the following test for safely concluding that a document stored on the World Wide Web was made available to the public:
A document accessible via a specific URL is available to the public if, before the filing date,
(1) it could be found with the help of a public web search engine by using one or more keywords which all related to the essence of the content of that document, and
(2) it remained accessible at that URL for a period of time long enough for a member of the public not bound to secrecy to have direct and unambiguous access to the document.
These conditions were sufficient, but not necessary, for concluding public availability.
Since the keywords of documents I1 and I2 related to the essence of their contents, and the documents existed on the Web at the same URL for two and a half months and nearly three weeks, respectively, they were considered to have been made available to the public before the filing date of the patent in suit. Document I1 was hence novelty destroying for the subject matter of claim 1 as granted, and the subject matter of claim 1 according to the first auxiliary request lacked an inventive step over document I2.
A further Internet document I3 cited by the opponent in combination with I2 against claim 1 of the second auxiliary request, however, was not considered to be publicly available, mainly because it was submitted to the Web only on one day, and only for twenty minutes. Moreover, I3 was neither indexed and the URL had not been made public before the filing date of the patent in suit, nor could the URL be guessed, nor was it plausible without further evidence that a “web crawler” could have indexed the document within its short existence on the Web. The second auxiliary request could therefore be allowed, and the patent was maintained in amended form on this basis.
In the divisional case (T 2/09), the Board found that the content of an e-mail did not become available to the public within the meaning of Article 54 (2) in 1973 for the sole reason that the e-mail was transmitted via the Internet before the filing date.
The appellant opponent had contended that the subject-matter of claim 1 was not inventive in view of document I2 and an unencrypted e-mail C5 sent to, and received by, the opponent's representative before the filing date, as was certified in a notarial record. C5 was devised to disclose the problem remaining over I2 and the solution thereto by the final feature of claim 1. Therefore, an inventive step hinged on the question of whether C5 was made available to the public.
In the opponent's view, e-mails may be routed inside and outside the E.U. and might be intercepted, either lawfully or unlawfully, thereby allowing third parties to gain knowledge of their contents.
The Board, however, had already serious doubts as to whether public availability of e-mails trans-mitted via the Internet could reasonably be established at all if the technical conditions of its above test for public availability of webpages were to be applied mutatis mutandis. Even under the assumption that the technical conditions of a test for public availability of e-mails could be devised that such e-mails could meet, e-mail transmission via the Internet would still not have rendered C5 publicly available for legal reasons connected with an alleged interception. This was the case because an unlawful access by an individual was analogous to the breach of a confidentiality agreement where it has to be proven that a disclosure before the filing date had actually occurred.
Assuming lawfulness of interception of e-mails by an Internet Service Provider (ISP), either to check that ISP policies were complied with or to address technical issues or to follow government instructions, the law of confidence also prohibited their disclosure so that the e-mails must all be deemed to be non-public, unless a specific instance of divulgation had been proven. Hence, e-mail C5 did not form prior art so that the subject-matter of claim 1 was inventive.
The Board's considerations relating to non-encrypted e-mail C5 applied a fortiori to encrypted e-mails. Moreover, as a consequence there was no need to assess any impact of disclaimers indicating confidentiality of e-mail content, no matter how they were phrased.
The two voluminous decisions (almost 100 pages each) give (ultra-)comprehensive guidance on public availability of webpages and e-mails indisputably existing on the Internet before the filing date. Whereas such webpages can be assumed to be publicly available if they can be found by entering keywords relating to the essence of their contents and remain accessible long enough to be found by an interested reader, e-mails are in any case party-to-party and not publicly available unless actual disclosure can be proven.
However, further difficulties in respect of Internet disclosures, in particular concerning publication dates and the correct standard of proof for assessing the particular circumstances of a given case, have still been left open.
As regards dates, the issues of which version of an Internet disclosure existed at which moment of time on this all-to-fleeting medium, and how sure we should be about this, regularly give rise to argument.
As regards standard of proof, the Board notes
Nevertheless, decisions T 1553/06 and T 2/09 hardly allow any further conclusions to be drawn in this respect. This (at least inter alia) appears to be due to the specific circumstances of the test cases where the above issues proved to be moot since both parties agreed on the fact that all documents relied upon existed on the Internet before the filing date, thus as a matter of course excluding any reasonable doubt concerning the versions uploaded and their associated dates, and that only the aspect of their accessibility was controversial.