EPO – Test cases for elucidating public availability of Internet disclosures

Posted: May 2nd, 2012

Koninklijke Philips Electronics N.V. (patentee) v. DSM IP Assets B. V. (opponent), Technical Board of Appeal 3.5.04, 12 March 2012, Case Nos. T 1553/06-3.5.04 "Public availability of documents on the World Wide Web/PHILIPS" and T 0002/09-3.5.04 "Public availability of an e-mail transmitted via the Internet/PHILIPS" with thanks to Stefan V. Steinbrener (Bardehle Pagenberg) for providing the case and summary

Both the European parent application 00200326.7 and its divisional 02077838.7 have been granted by the EPO to Philips and then opposed by DSM in a "joint venture" of  patentee and opponent as contrived test cases regarding the question of whether documents placed inten-tionally on the Internet constituted prior art within the meaning of Article 54(2) EPC 1973. Those documents related to (i) web pages either certified to have been found by key words entered in a search engine or merely alleged to have existed on the Internet before the filing date of the parent application, and (ii) encrypted or unencrypted e-mails sent and received before said filing date, as certified in a notarial record.

After finding that the contrived opposition cases were admissible, the Board in decision T 1553/06 relating to the parent application, excluded the mere theoretical possibility of having access to a means of disclosure to be sufficient for public availability. Instead, a practical pos-sibility of having "direct and unambiguous access" was required for this purpose. In the case of a document stored on the World Wide Web, for which the Uniform Resource Locator (URL) was not made available to the public, this requirement was only exceptionally met, i.e. if the URL could readily be guessed. Sufficient proof for "direct and unambiguous access" could also not be established by the fact that the document could be found by entering key-words in a public web search machine before the filing date of the patent application. How-ever, public availability could be safely concluded for a document stored on the World Wide Web and accessible via a specific URL if all the following conditions were met
(1) the document could be found with the help of a public web search engine by using one or more keywords all related to the essence of its content, and
(2) the document remained accessible at that URL for a period of time long enough for a member of the public to have direct and unambiguous access to the document.
If any of these conditions was not met, the above test did not permit to conclude whether or not the document in question was made available to the public.

In decision T 0002/09 relating to the divisional application, the Board found that the content of an e-mail did not become public for the sole reason that the e-mail was transmitted via the Internet before the filing date.

Read the decisions (in English) here and here.

Head note and summary: Stefan V. Steinbrener (Bardehle Pagenberg)

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