In order to be patentable, one of the criteria which an invention must meet is to be new. Article 54 EPC states that:
1) An invention shall be considered new if it does not form part of the state of the art.
2) The 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.
This means that, if the invention has been publicly disclosed prior to the filing date of the patent application, then it lacks novelty and cannot be validly patented. In order for a document to be publically disclosed, there has to be direct an unambiguous access to that document but it is not necessary to prove that someone actually did access it. The Technical Board of Appeal (TBA) have recently issued decisions in cases T1553/06, T0002/09 and T0834/09 clarifying what it means to make a document "available to the public".
This test case concerned whether documents published on the internet form part of the state of the art under Article 54 EPC.
The TBA considered that, unless the URL of a webpage is particularly straightforward, the fact that someone could guess at the URL could not be considered direct and unambiguous access. However, in cases where a webpage could be accessed through a search engine, the TBA set down the following test for determining whether it is publically available:
If before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL
1) could be found with the help of a public web search engine by using one or more keywords, all related to the essence of the content of that document; and
2) remained accessible at that URL for a period of time long enough for a member of the public, ie someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document,
then the document was made available to the public.
It is worth noting that, though the TBA considered that the standard of proof required to establish the date on which an internet document was published should be decided on a balance of probabilities, courts have generally imposed a higher standard of proof in cases where only one party had access to the information.
In a second test case, the TBA considered the question of information which had been transmitted by email.
It was considered that there is a basic difference between documents held on a webpage and those transmitted by email. In the case of a webpage, the information can be accessed and read by the public at large via its URL. In contrast, an email is a communication sent by one person to one or more recipients, and can only be read by the public at large if intercepted.
In Europe, the interception of emails by individuals is illegal but interception by ISPs is not. The TBA held that emails intercepted unlawfully do not become available to the public, and that lawful interception of an email by an ISP does not automatically result in that email becoming publicly available. It would be necessary to establish that an unencrypted email had been disclosed by the ISP or law-enforcement personnel to the public on at least one occasion.
In this case, the applicant argued that a document had not been disclosed to the public prior to the filing date of the patent because there was no evidence that it had been catalogued and shelved by the libraries it had been sent to. The opponent argued that the book had been received and date-stamped by several libraries before the filing date and that, because the staff working at the library were not bound to secrecy, the document had been publicly disclosed.
The TBA ruled that, as there is no minimum number of people required to satisfy the word "public" and the library staff were under no obligation to keep the document confidential, the document had been "made available to the public" when it was date-stamped.
It is important that any new invention is kept confidential until a patent application is filed. However, these cases provide useful clarification of the law in this area, confirming that the use of email does not place information in the public domain except in exceptional circumstances, and that internet publications are generally "available to the public".
1 November 2012