13 May 2012

Disclosure Via The Internet – Can it Compromise Patentability?

As readers will appreciate, patents are granted for inventions that satisfy certain requirements. One such requirement is that the invention must be new.

There are two aspects to this ‘novelty’ requirement where European (and UK) patent applications are concerned; not only should the invention be new in the sense that it is different to that which has gone before, but it should also be new in the sense that it remains a secret until the date on which the respective patent application is filed.

Naturally an invention will no longer be a secret if it has been disclosed to the public; but what does this mean in practice?

As the law stands, an invention is deemed to have been disclosed to the public if one member of the public could have gained knowledge of it without a breach of confidentiality.  Clearly then, describing your invention in a published journal article will mean that the invention is no longer a secret.  Equally, presenting your invention at a scientific conference will put it into the public domain.  There is no restriction as to the means, time or place of an earlier disclosure or, generally speaking, regarding the public to whom the information has been made available (they simply need to be able to make use of the information, if they so desire).  It is also unnecessary for a person to have actually accessed the information; only the possibility of access is required.  Thus, a document sent in the post that is neither explicitly nor implicitly confidential, a book sitting unread on a library shelf and the use of an article in public can all preclude valid patent protection from being obtained if such disclosures are made before the filing date of the respective patent application.

But what about disclosures made via electronic means?  As we have all come to appreciate and use to our advantage, electronic means of communication allow a nearly instantaneous world-wide publication.  Does this mean that an invention described in a document posted on the internet or in an email is no longer confidential, so precluding patent protection in respect of the same?

Such questions have recently been put before the European Patent Office (EPO) in two legal test cases created by Philips.

In the cases under review, Philips had filed two related European patent applications for a black and white display, which were granted as European Patent Nos. 1006733 and 1263240.  Prior to the filing date of the applications the exact wording used in the claims of the first application had been posted on the internet to various URLs (the postings being removed after various periods of time).  Similarly, the claims of the second application had been reproduced exactly in encrypted and non-encrypted emails sent via the internet.  As many readers will no doubt be aware, the claims of a patent application serve to define an alleged invention.

On agreement with Philips, and in order to invoke legal review, the granted patents were challenged by a third party, DSM.  As part of subsequent proceedings before the EPO, the latter was tasked with deciding whether the posting of the claims on the internet and sending of the same via email constituted prior public disclosures of the invention that should have prevented patent protection from being obtained.

In the case of posting on the internet, the EPO arrived at a two-step test for assessing whether an invention disclosed in this way becomes public.  If, before the effective filing date of a European patent application, a document stored on the internet 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 (i.e. someone under no obligation to keep the document secret) to have direct and unambiguous access to the document, then, in the EPO’s view, the information disclosed in that document had been made available to the public and, hence, would be novelty destroying for a European patent application filed later in respect of the same.

In the case of disclosure by email, the EPO decided that emails sent over the public internet (i.e. not via a company’s intranet) are not public information, and should be granted absolute confidentiality regardless of the content of the email and identity of the sender and recipient.  In the EPO’s view, this would be true even if there was a lawful reason to intercept emails, for example, at internet service provider level.

Thus while it remains the case that novelty must be assessed objectively and that the ease with which a person can access the disclosed information is irrelevant, the EPO has now made it clear that the availability of information on the internet cannot be a purely theoretical matter; it must have a practical element too.  The required level of accessibility to the disclosed information would therefore appear to be higher for electronic disclosures than it is for disclosures in writing, by oral means or by use, when it comes to destroying the novelty of a later claimed invention.
It could, of course, be quite difficult in practice, however, to prove what was disclosed on the internet, and on what date, to the required standard, if a challenging party is trying to show that a claimed invention has already been made public.  In the Philips cases a notary public was used to carefully record such information at the time of the electronic disclosures.

It should perhaps also be mentioned that a requirement to pay for online access, or a website being password-protected, is no bar to availability; that is to say, the information disclosed on such websites would count as disclosures to the public too.  Only websites that are confidential in the strict sense, such as employee-only accessible company web pages, would seem exempt from anticipating a later claimed invention.

The rule-of-thumb, then, is not to post information about your invention on the public internet if patent protection for the same in Europe is desired, unless and until a patent application has been filed.  Although you can afford to disclose more information in an email without negatively impacting upon novelty of your invention in Europe, the senders of sensitive information by email should nevertheless be careful to ensure that their emails are being sent to the intended recipient.  Accidentally allowing the details of your commercial interests to fall into the wrong hands can cause all sorts of problems in terms of entitlement, ownership and inventorship, for example.

Rest assured, however, that should a third party inadvertently learn of your invention through no direct fault of your own, the disclosure would be viewed by the EPO and national courts as non-prejudicial to novelty of the invention if it can be shown that the information was obtained unlawfully or through a breach of confidence.  The EPO allows a six-month grace period in which to file a European patent application after an invention has been disclosed in this way.