Internet as a source of prior art

In the context of patent law, using the Internet as a source of prior art when assessing whether an invention is novel and inventive, is problematic since it is often difficult to ascertain precisely when information on websites became available to the public. [ T 1134/06, Reasons 3.2: "It is thus at the present state of affairs often very difficult to establish with a high degree of reliability what exactly appeared on a web site and when."(emphasis added)] Case law relating to the evidentiary value of information retrieved from the Internet is sparse [T 1134/06, Reasons 3.3] but concludes that using the Internet is acceptable provided that the date of a particular disclosure can be reliably determined.

Background

In most patent laws, an (alleged) invention has to be "new" and "inventive" (or non-obvious, which is basically synonymous of "inventive") to be considered "patentable", i.e. to be validly patented. An invention is considered to be new if it does not form part of the "prior art" (or state of the art), i.e. if it was not already disclosed in the prior art. [ See for instance, in the European Patent Convention (EPC), EPC Article|54|1.] An invention is considered to be inventive if it is not obvious in view of the prior art. [ See for instance, in the EPC, EPC Article|56. ] The prior art is essentially everything which was made available to the public before the filing date of the patent. [ The definition of the prior art, i.e. what is part of the prior art and what is not part of the prior art, however depends on the legislation considered, since patent laws are essentially territorial in nature. ]

In practice, if a device or a method was already known (e.g. described in a scientific paper) before the filing date [ or priority date. ] of the patent covering the device or the method or if the device or method is obvious in view of what was known before the filing date, then, in general, it is not considered to be new (because known before the filing date) or not considered to be inventive (because obvious in view of what was known before the filing date of the patent), and then not considered "patentable". A patent cannot be obtained for the device or method, or, if obtained ("granted"), it can generally be "invalidated".

The identification of the prior art is therefore of utmost importance to determine whether an invention is patentable, i.e. whether a patent can be granted for an invention (or whether a patent which has been granted for an invention is valid). The purpose of the novelty criterion is to prevent the prior art being patented again. [ [http://documents.epo.org/projects/babylon/eponet.nsf/0/F7944E5E0AD5958DC12572BC004B2CB6/$File/clr_2006_en.pdf "Case Law of the Boards of Appeal of the European Patent Office (Fifth edition 2006)"] , pages 46-47. (pdf 4.1 MB). ]

The Internet is a popular source of technical information and is of particular interest for the purposes of establishing the prior art. Its use is however surrounded by concerns as to its reliability.T 1134/06, Reasons 3.6. ]

Jurisdictions

European Patent Organisation

The Board of Appeal of the European Patent Office (EPO) in decision T 1134/06 considered that: "there are recognized reliability and security issues concerning the Internet and the web and information retrieved from them. (...) It is thus at the present state of affairs often very difficult to establish with a high degree of reliability what exactly appeared on a web site and when." [ T 1134/06, Reasons 3.2. ]

In particular, the Board considered the evidentiary value of information from web pages retrieved on the Internet Archive. The Board found that previous case law decisions did not find that the information retrieved from the Internet was excluded per se. T 1134/06, Reasons 3.3.1. ] :"A disclosure on the Internet may be comprised within the state of the art... If an Internet disclosure is to be used as prior art a strict standard of proof should be adopted. Thus, the fact that an Internet disclosure is state of the art ... should be proved "beyond any reasonable doubt". The particular facts and evidence required will depend on each individual case, but will normally have to ... answer the questions of "when" the Internet disclosure was made available to the public, "what" was made available and "under which circumstances" was it made available to the public. Concerning the latter question, it will in most cases be necessary to address the main concern of reliability surrounding the Internet, in particular so as to establish whether and in how far a retrieved disclosure is true to the disclosure appearing at that date."

Regarding the Internet Archive, the Board finally held that :"Where a disclosure has been retrieved from [such a resource] , further evidence concerning the history of the disclosure, whether and how it has been modified since the date it originally appeared on a web site will be necessary. This could be in the form of an authoritative statement from the archivist. Alternatively, an appropriate statement as to the content, either from the owner or author of the archived web site which included the disclosure may suffice." [ T 1134/06, Reasons 4.2. ]

According to David Rogers, Legal Member of a Board of Appeal at the EPO, "practitioners who are looking for ‘killer’ prior art would be well advised to stick with the traditional print means, unless they have a considerable body of evidence to support the reliability of an internet disclosure. The case also sets out how a party can cast doubt on the reliability of such disclosures." [ David Rogers, "Documents on the internet as prior art", Journal of Intellectual Property Law & Practice, Vol. 2 No. 6, June 2007, pp. 354-355. ]

Germany

In 2002, "the "Bundespatentgericht" in case BPatG 17W (pat) 1/02 (see GRUR 2003 Heft 04, pp 323-325) confirmed in later BPatG 17W (pat) 47/00, ruled that the Internet was not a reliable source for determining the state of the art. This applied also to web archives such as the InternetArchive."

United States

Internet publications can be relied on as prior art under United States patent law. The effective date of the publication will be determined by evidence, such a date of posting listed in the publication itself, or a date of archiving in the Internet Archive. [ [http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2128.htm MPEP 2128 "Printed Publications" as Prior Art"] ]

References

* [http://www.jurpc.de/rechtspr/20030121.htm "Bundespatentgericht Beschluss vom 17.10.2002 17 W (pat) 1/02 Verfahren zum Vorabspeichern von Computernetzwerk-Information JurPC Web-Dok. 121/2003"]
* [http://legal.european-patent-office.org/dg3/pdf/t061134eu1.pdf Decision T 1134/06] of the Boards of Appeal of the European Patent Office, January 16, 2007.

Notes