G - patentability CH4

Question 1

1. General remarks and definition

Answer 1

An invention is “considered to be new if it does not form part of the state of the art”. The “state of the art” is defined as “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”. The width of this definition is to be noted. There are no restrictions whatever as to the geographical location where or the language or manner in which the relevant information was made available to the public; also no age limit is stipulated for the documents or other sources of the information. There are, however, certain specific exclusions (see G‑V). However, since the “state of the art” available to the examiner will mainly consist of the documents listed in the search report, G‑IV, 3 to 6, deals with the question of public availability only in relation to written description (either alone or in combination with an earlier oral description or use).

The principles to be applied in determining whether other kinds of prior art (which could be introduced into the proceedings e.g. by a third party under Art. 115) have been made available to the public are set out in G‑IV, 7.1 to 7.4.

Art. 54(1) and (2)

For the examination of the novelty of claimed subject-matter, see G‑VI.

A written description, i.e. a document, is regarded as made available to the public if, at the relevant date, it was possible for members of the public to gain knowledge of the content of the document and there was no bar of confidentiality restricting the use or dissemination of such knowledge. For instance, German utility models (“Gebrauchsmuster”) are already publicly available as of their date of entry in the Register of utility models (“Eintragungstag”), which precedes the date of announcement in the Patent Bulletin (“Bekanntmachung im Patentblatt”). The search report also cites documents in which doubts with regard to the fact of public availability (for “in-house state of the art”, see F‑II, 4.3) and doubts concerning the precise date of publication (see B‑VI, 5.6 and G‑IV, 7.5) of a document have not, or not fully, been removed (see B‑VI, 5.6 and G‑IV, 7.5).

If the applicant contests the public availability or assumed date of publication of the cited document, the examiner needs to consider whether to investigate the matter further. If the applicant shows sound reasons for doubting whether the document forms part of the “state of the art” in relation to the application and any further investigation does not produce evidence sufficient to remove that doubt, the examiner does not pursue the matter further. The only other problem likely to arise for the examiner is where:

(i)
a document reproduces an oral description (e.g. a public lecture) or gives an account of a prior use (e.g. display at a public exhibition); and

(ii)
only the oral description or lecture was publicly available before the “date of filing” of the European application, the document itself being published on or after this date.

In such cases, the examiner starts with the assumption that the document gives a true account of the earlier lecture, display or other event and therefore regards the earlier event as forming part of the “state of the art”. If, however, the applicant gives sound reasons for contesting the truth of the account given in the document then again the examiner does not pursue the matter further.

Question 2

2. Enabling disclosure

Answer 2

Subject-matter can only be regarded as having been made available to the public, and therefore as comprised in the state of the art pursuant to Art. 54(1), if the information given is sufficient to enable the skilled person, at the relevant date (see G‑VI, 3) and taking into account the common general knowledge in the field at that time, to practise the technical teaching which is the subject of the disclosure (see T 26/85, T 206/83 and T 491/99).

Where a prior-art document discloses subject-matter which is relevant to the novelty and/or inventive step of the claimed invention, the disclosure of that document must be such that the skilled person can reproduce that subject-matter using common general knowledge (see G‑VII, 3.1). Subject-matter does not necessarily belong to the common general knowledge simply because it has been disclosed in the state of the art: in particular, if the information can only be obtained after a comprehensive search, it cannot be considered to belong to the common general knowledge and cannot be used to complete the disclosure (see T 206/83).

For example, a document discloses a chemical compound (identified by name or by structural formula), indicating that the compound may be produced by a process defined in the document itself. The document, however, does not indicate how to obtain the starting materials and/or reagents used in the process. If the skilled person moreover cannot obtain these starting materials or reagents on the basis of common general knowledge (e.g. from text books), the document is insufficiently disclosed with respect to that compound. Hence, it is not considered to belong to the state of the art according to Art. 54(2) (at least in as far as it relates to that compound) and consequently it does not prejudice the patentability of the claimed invention.

If, on the other hand, the skilled person knows how to obtain the starting materials and reagents (e.g. they are commercially available, or are well-known and appear in reference text books), the document is sufficiently disclosed with respect to the compound and therefore belongs to the state of the art according to Art. 54(2). The examiner can then validly rely upon this document to raise objections against the claimed invention.

Question 3

3. Date of filing or priority date as effective date

Answer 3

For the purposes of Art. 54(2) and (3), the date of priority counts as the date of filing for both the European application being examined and conflicting European applications under Art. 54(3), on condition that the respective priority is valid (Art. 89). Different claims, or alternative subject-matters claimed in one claim, may have different effective dates, i.e. the date of filing or (one of) the claimed priority date(s). The question of novelty must be considered against each claim (or part of a claim). The state of the art in relation to one claim or one part of a claim may include matter, e.g. an intermediate document (see B‑X, 9.2.4), which cannot be cited against another claim or another alternative subject-matter encompassed by the same claim because it has an earlier effective date.

The priority right of the application being examined or the patent being opposed may also be lost as a result of failure to provide a translation of the priority document when requested in accordance with Rule 53(3) (see A‑III, 6.8 and subsections).

Of course, if all the matter in the state of the art was made available to the public before the date of the earliest priority document, the examiner need not (and must not) be concerned with the allocation of effective dates.

Art. 89

If the applicant files missing parts of the description, or drawings (see A‑II, 5.1), late under Rule 56, the accorded date of the application is the date of filing of these missing elements under Rule 56(2) (see A‑II, 5.3) unless they are completely contained in the priority document and the requirements given in Rule 56(3) are satisfied (see A‑II, 5.4), in which case the original filing date is maintained. The date of the application as a whole is thus either the date of filing of the missing elements or the original filing date. In the case of erroneously filed documents, the same applies if the applicant files a correct description, claims or drawings, or parts thereof, under Rule 56a (see A‑II, 6).

Rule 56

Rule 56a

Claims filed in response to a communication under Rule 58 do not result in a change in the filing date of the application (see A‑III, 15), as they are considered as amendments to the application as filed (see H‑IV, 2.2.4).

Question 4

4. Documents in a non-official language

Answer 4

If the applicant

(i)
disputes the relevance of a document in a non-official language cited in the search report (for procedure at the search stage, see B‑X, 9.1.2 and 9.1.3), and

(ii)
gives specific reasons,

the examiner needs to consider whether, in the light of these reasons and of the other prior art available, it is justified to pursue the matter. If so, the examiner must obtain a translation of the document (or merely the relevant part of it if that can be easily identified). If, after the translation, the document remains relevant, the examiner sends a copy of the translation to the applicant with the next official communication.

The requirement to provide a translation of a document in a non-official language also applies if the applicant is proficient in the language concerned. The translation enables the boards of appeal to examine whether the examining division’s decision was justified (T 655/13).

Question 5

4.1 Machine translations

Answer 5

In order to overcome the language barrier constituted by a document in an unfamiliar non-official language, it might be appropriate for the examiner to rely on a machine translation of said document (see T 991/01), which is sent to the applicant (see B‑X, 9.1.3). If only part of the translated document is relevant, the particular passage relied upon must be identified (see B‑XI, 3.2). A translation has to serve the purpose of rendering the meaning of the text in a familiar language (see B‑X, 9.1.3). Therefore mere grammatical or syntactical errors which have no impact on the possibility of understanding the content do not hinder its qualification as a translation (see T 287/98).

A general statement that machine translations as such cannot be trusted is not sufficient to invalidate the probatory value of the translation. If a party objects to the use of a specific machine translation, that party bears the burden of adducing evidence (in the form of, for instance, an improved translation of the whole or salient parts of the document) showing the extent to which the quality of the machine translation is defective and should therefore not be relied upon.

When the party provides substantiated reasoning for questioning the objections raised based on the translated text, the examiner must take these reasons into account, similarly to when the publication date is questioned (see G‑IV, 7.5.3).

Question 6

5. Conflict with other European applications

Question 7

5.1 State of the art pursuant to Art. 54(3)

Answer 7

The state of the art also comprises the content of other European applications filed or validly claiming a priority date earlier than – but published under Art. 93 on or after – the date of filing or valid date of priority of the application being examined. The date of priority counts as the date of filing for both the European application being examined and conflicting European applications under Art. 54(3), on condition that the respective priority is valid (Art. 89). Such earlier applications are part of the state of the art only when considering novelty and not when considering inventive step. By the “content” of a European application is meant the whole disclosure, i.e. the description, drawings and claims, including:

(i)
any matter explicitly disclaimed (with the exception of disclaimers for unworkable embodiments);

(ii)
any matter for which an allowable reference (see F‑III, 8, penultimate paragraph) to other documents is made; and

(iii)
prior art in so far as explicitly described.

However, the “content” does not include any priority document (the purpose of such document being merely to determine to what extent the priority date is valid for the disclosure of the European application (see F‑VI, 1.2)) nor, in view of Art. 85, the abstract (see F‑II, 2).

It is important to note that it is the content of the earlier application as filed which is to be considered when applying Art. 54(3). Where an application is filed in a non-official language as permitted by Art. 14(2) (see A‑VII, 1.1), it may happen that matter is erroneously omitted from the translation in the language of the proceedings and not published under Art. 93 in that language. Even in this case, it is the content of the original text which is relevant for the purposes of Art. 54(3).

Question 8

5.1.1 Requirements

Answer 8

Whether a published European application can be a conflicting application under Art. 54(3) is determined firstly by its filing date and the date of its publication; the former must be before the filing or valid priority date of the application under examination, the latter must be on or after that date. If the published European application validly claims priority, the priority date replaces the filing date (Art. 89) for that subject-matter in the application which corresponds to the priority application. If a priority claim was abandoned or otherwise lost with effect from a date prior to publication, the filing date and not the priority date is relevant, irrespective of whether or not the priority claim might have conferred a valid priority right.

Further it is required that the conflicting application was still pending at its publication date (see J 5/81). If the application was withdrawn or otherwise lost before the date of publication, but published because the preparations for publication had been completed, the publication has no effect under Art. 54(3), but only under Art. 54(2). Art. 54(3) must be interpreted as referring to the publication of a “valid” application, i.e. a European patent application in existence at its publication date.

Changes taking effect after the date of publication (e.g. withdrawal of a designation or withdrawal of the priority claim or loss of the priority right for other reasons) do not affect the application of Art. 54(3) (see H‑III, 4.2 for transitional provisions concerning Art. 54(4) EPC 1973 and A‑III, 11.1 and 11.3 for transitional arrangements concerning non-payment of designation fees for applications filed before 1 April 2009).

Question 9

5.1.2 Accorded date of filing and content of the application still subject to review

Answer 9

The prior art considered by the examiner might comprise documents (European or international patent applications) for which the accorded date of filing and the content of the application on the filing date may still be under review before the EPO. This might be the case, for instance, when:

(i)
a European patent application contains parts of the description and/or drawings filed under Rule 56 or (parts of) claims, description and/or drawings filed under Rule 56a, or

(ii)
an international patent application contains elements or parts of the description, drawings or claims filed under Rule 20.5, 20.5bis or 20.6 PCT.

The examiner checks whether a final decision on the accorded date of filing and on the content of the application on the filing date has already been taken before considering the documents as being state of the art under Art. 54(3). The content of the application determined according to Rules 56 or 56a EPC or Rules 20.5, 20.5bis or 20.6 PCT is considered as the content of the application as filed within the meaning of Art. 54(3) EPC. Note that under Rule 56a(4) EPC and Rule 20.5bis(d) PCT, the erroneously filed application documents or parts remain in the application (see A‑II, 6.4 and PCT‑EPO Guidelines A‑II, 6.2).

If the date of filing and/or the content of the disclosure have/has not yet finally been determined, the examiner temporarily deals with the documents (if relevant for assessing the patentability of the claimed subject-matter) as if all application documents and parts thereof had been filed on the date of filing initially accorded to the application, revisiting the issue at a later point in time.

Question 10

5.2 Euro-PCT applications

Answer 10

The above principles also apply to PCT applications designating EP, but with an important difference. Art. 153(5), in conjunction with Rule 165, makes it clear that a PCT application is included in the state of the art for the purposes of Art. 54(3) if the PCT applicant has paid the required filing fee under Rule 159(1)(c) and has supplied the PCT application to the EPO in English, French or German (this means that a translation is required where the PCT application was published in Japanese, Chinese, Spanish, Russian, Korean, Portuguese or Arabic).

Therefore, it is not required that all conditions for entry into the European phase be fulfilled for a Euro-PCT application to be considered a conflicting European application under Art. 54(3) EPC.

Question 11

5.3 Commonly designated states

Answer 11

See H‑III, 4.2 for the transitional applicability of Art. 54(4) EPC 1973 to applications which were pending on 13 December 2007 and patents which had already been granted on that date.

Question 12

5.4 Double patenting

Answer 12

As acknowledged by the Enlarged Board, the prohibition on double patenting is applicable under Art. 125 (G 4/19). It is a principle of procedural law generally recognised in the contracting states that two patents cannot be granted to the same applicant with claims directed to the same subject-matter.

The prohibition of double patenting applies to three types of combinations of European applications by the same applicant: two applications filed on the same day, parent and divisional applications, or an application and its priority application.

It is permissible to allow an applicant to proceed with two applications having the same description which do not claim the same subject-matter (see also T 2461/10).In cases where there are two or more European applications from the same applicant designating the same state or states and the claims of those applications have the same filing or priority date and relate to the same invention, the applicant should be required to perform one of the following: amend one or more of the applications in such a manner that the subject-matter of the claims of the applications is not identical, or withdraw overlapping designations, or choose which one of those applications is to proceed to grant. If the applicant does not do so, once one of the applications is granted, the other(s) will be refused under Art. 97(2) in conjunction with Art. 125 (G 4/19). If the claims of those applications are merely partially overlapping, no objection should be raised (see T 877/06). Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though the other did not exist.

Question 13

6. Conflict with national rights of earlier date

Answer 13

Where a national right of an earlier date exists in a contracting state designated in the application, there are several possibilities of amendment open to the applicant. First, that designation may be withdrawn from the application for the contracting state of the national right of earlier date. Second, for such state, the applicant may file claims which are different from the claims for the other designated states (see H‑II, 3.3 and H‑III, 4.4). Third, the applicant can limit the existing set of claims in such a manner that the national right of earlier date is no longer relevant.

In opposition or limitation proceedings, the proprietor may file claims which are different from the claims for the other contracting states or limit the existing set of claims in such a manner that the national right of earlier date is no longer relevant (see H‑III, 4.4 and D‑X, 10.1).

In opposition proceedings, the proprietor may also request the revocation of the patent for the contracting state of the national right of earlier date (see D‑I, 3; D‑VIII, 1.2.5; E‑VIII, 8.4). However, this is not possible in limitation or revocation proceedings (see D‑X, 3).

Amendment of the application to take account of prior national rights is neither required nor suggested (see also H‑III, 4.4). However, if the claims have been amended, then amendment of the description and drawings is required if necessary to avoid confusion.

Question 14

7. State of the art made available to the public “by means of a written or oral description, by use, or in any other way”

Question 15

7.1 Types of use and instances of state of the art made available in any other way
Use may be constituted by producing, offering, marketing or

Answer 15

Use may be constituted by producing, offering, marketing or otherwise exploiting a product, or by offering or marketing a process or its application or by applying the process. Marketing may be effected, for example, by sale or exchange.

The state of the art may also be made available to the public in other ways, as for example by demonstrating an object or process in specialist training courses or on online media platforms.

Availability to the public in any other way also includes all possibilities which technological progress may subsequently offer of making available the aspect of the state of the art concerned.

Instances of public prior use or availability in any other way will typically be raised in opposition proceedings. They may rarely arise in examination proceedings.

Question 16

7.2 Matters to be determined by the division as regards prior use

Answer 16

When dealing with an allegation that an object or process has been used in such a way that it is comprised in the state of the art (prior use), the division will have to determine the following details:

(i)
the date on which the alleged use occurred, i.e. whether there was any instance of use before the relevant date (prior use);

(ii)
what has been used, in order to determine the degree of similarity between the object used and the subject-matter of the European patent; and

(iii)
all the circumstances relating to the use, in order to determine whether and to what extent it was made available to the public, as for example the place of use and the form of use. These factors are important in that, for example, the details of a demonstration of a manufacturing process in a factory or of the delivery and sale of a product may well provide information as regards the possibility of the subject-matter having become available to the public.

On the basis of the submissions and the evidence already available, e.g. documents confirming sale, or affidavits related to the prior use, the division will first establish the relevance of the alleged prior use. If on the basis of this assessment it is of the opinion that the prior use is sufficiently substantiated and relevant, and if the prior use is not contested, the division may take a decision using the submissions and the evidence already available. If the prior use or certain circumstances relating to it are contested, the division will need to take further evidence (e.g. hearing witnesses or performing an inspection) for those facts which are relevant to the case and which cannot yet be considered proven on the basis of the evidence already submitted. According to the circumstances of a particular case, such further evidence might have to be submitted by the party(ies). Evidence is always taken under participation of the party(ies), normally in oral proceedings. For details concerning means of evidence see E‑IV, 1.2.

Question 17

7.2.1 General principles

Answer 17

Subject-matter is regarded as made available to the public by use or in any other way if, at the relevant date, it was possible for members of the public to gain knowledge of the subject-matter and there was no bar of confidentiality restricting the use or dissemination of such knowledge (see also G‑IV, 1 with reference to written descriptions). This may, for example, arise if an object is unconditionally sold to a member of the public, since the buyer thereby acquires unlimited possession of any knowledge which may be obtained from the object. Even where in such cases the specific features of the object may not be ascertained from an external examination, but only by further analysis, those features are nevertheless to be considered as having been made available to the public. This is irrespective of whether or not particular reasons can be identified for analysing the composition or internal structure of the object. These specific features only relate to the intrinsic features. Extrinsic characteristics, which are only revealed when the product is exposed to interaction with specifically chosen outside conditions, e.g. reactants or the like, in order to provide a particular effect or result or to discover potential results or capabilities, therefore point beyond the product per se as they are dependent on deliberate choices being made. Typical examples are the first or further application as a pharmaceutical product of a known substance or composition (see Art. 54(4) and (5)) and the use of a known compound for a particular purpose, based on a new technical effect (see G 2/88). Thus, such characteristics cannot be considered as already having been made available to the public (see G 1/92). T 1833/14 contains an example where a commercially available product was found by the board not to have been made available to the public as the skilled person was not able to reproduce it without undue burden, i.e. the alleged public prior use did not amount to an enabling disclosure.

If, on the other hand, an object could be seen in a given place (a factory, for example) to which members of the public not bound to secrecy, including persons with sufficient technical knowledge to ascertain the specific features of the object, had access, all knowledge which an expert was able to gain from a purely external examination is to be regarded as having been made available to the public. In such cases, however, all concealed features which could be ascertained only by dismantling or destroying the object will not be deemed to have been made available to the public.

Question 18

7.2.2 Agreement on secrecy

Answer 18

The basic principle to be adopted is that subject-matter has not been made available to the public by use or in any other way if there is an express or tacit agreement on secrecy which has not been broken.

In order to establish whether there is a tacit agreement, the division must consider the particular circumstances of the case especially whether one or more parties involved in the prior use had an objectively recognisable interest in maintaining secrecy. If only some of the parties had such an interest, it must be established if the other parties implicitly accepted to act accordingly. For example, this is the case when the other parties could be expected to maintain secrecy in accordance with the usual business practice in the relevant industry. For establishing a tacit agreement important aspects to be considered are, inter alia, the commercial relationship between the parties and the exact object of the prior use. The following may be indicators of a tacit secrecy agreement: A parent company – subsidiary relationship, a relationship of good faith and trust, a joint venture, the delivery of test specimens. The following may be indicators of the absence of such an agreement: An ordinary commercial transaction, the sale of parts for serial production.

As a rule, the general standard “balance of probabilities” applies. However, if practically all evidence lies within the power of the party bearing the burden of proof, the facts must be proven beyond reasonable doubt. For example, an opponent alleging that subject-matter was made available without any express or tacit agreement on secrecy must substantiate and, if contested, convincingly prove the circumstances from which public availability can be derived (e.g. ordinary sale to a customer, parts supplied for serial production). The proprietor can challenge this by demonstrating inconsistencies and gaps in the chain of proof or by substantiating facts from which secrecy can be derived (e.g. joint development, samples for test purposes). If these elements lead to reasonable doubts as to public availability, public prior use has not been established.

For the particular case of a non-prejudicial disclosure arising from an evident abuse in relation to the applicant, see G‑IV, 7.3.2 and G‑V.

Question 19

7.2.3 Use on non-public property

Answer 19

As a general rule, use on non-public property, for example in factories and barracks, is not considered as use made available to the public, because company employees and soldiers are usually bound to secrecy, save in cases where the objects or processes used are exhibited, explained or shown to the public in such places, or where specialists not bound to secrecy are able to recognise their essential features from the outside. Clearly the above-mentioned “non-public property” does not refer to the premises of a third party to whom the object in question was unconditionally sold or the place where the public could see the object in question or ascertain features of it (see the examples in G‑IV, 7.2.1 above).

Question 20

7.2.4 Example of the accessibility of objects used

Answer 20

A press for producing light building (hard fibre) boards was installed in a factory shed. Although the door bore the notice “Unauthorised persons not admitted”, customers (in particular dealers in building materials and clients who were interested in purchasing light building boards) were given the opportunity of seeing the press although no form of demonstration or explanation was given. An obligation to secrecy was not imposed as, according to witnesses, the company did not consider such visitors as a possible source of competition. These visitors were not genuine specialists, i.e. they did not manufacture such boards or presses, but were not entirely laymen either. In view of the simple construction of the press, the essential features of the invention concerned were bound to be evident to anyone observing it. There was therefore a possibility that these customers, and in particular the dealers in building materials, would recognise these essential features of the press and, as they were not bound to secrecy, they would be free to communicate this information to others.

Question 21

7.2.5 Example of the inaccessibility of a process

Answer 21

The subject of the patent concerns a process for the manufacture of a product. As proof that this process had been made available to the public by use, a similar already known product was asserted to have been produced by the process claimed. However, it could not be clearly ascertained, even after an exhaustive examination, by which process it had been produced.

Question 22

7.3 State of the art made available by means of oral description

Question 23

7.3.1 Cases of oral description

Answer 23

The state of the art is made available to the public by oral description when facts are unconditionally brought to the knowledge of members of the public, such as in the course of a conversation or a lecture or by means of television, podcast or sound reproduction equipment.

Question 24

7.3.2 Non-prejudicial oral description

Answer 24

The state of the art will not be affected by oral descriptions made by and to persons who were bound to, and preserved, secrecy, nor by an oral disclosure which was made no earlier than six months before the filing of the European patent application and which derives directly or indirectly from an evident abuse in relation to the applicant or that party’s legal predecessor. In determining whether evident abuse has occurred, note G‑V, 3.

Question 25

7.3.3 Matters to be determined by the division in cases of oral description

Answer 25

Once again, in such cases the following details will have to be determined:

(i)
when the oral description took place;

(ii)
what was described orally; and

(iii)
whether the oral description was made available to the public; this will also depend on the type of oral description (conversation, lecture) and on the place at which the description was given (public meeting, factory hall; see also G‑IV, 7.2(iii)).

Question 26

7.3.4 Standard of proof

Answer 26

Unlike a written document, the contents of which are fixed and can be read again and again, an oral presentation is ephemeral. Therefore, the standard of proof for ascertaining the content of an oral disclosure is high. Whether the amount of evidence provided is sufficient to establish the content of the oral disclosure based on this standard of proof has to be evaluated on a case-by-case basis and depends on the quality of the evidence in each case. However, evidence from the lecturer alone usually does not provide a sufficient basis for determining the content of the oral disclosure.

Question 27

7.4 State of the art made available to the public in writing and/or by any other means

Answer 27

For this state of the art, details equivalent to those defined in G‑IV, 7.3.3 have to be determined if they are not clear from the written or other disclosure itself or if they are contested by a party.

If information is made available by means of a written description and use or by means of a written and oral description, but only the use or the oral description is made available before the relevant date, then in accordance with G‑IV, 1, the subsequently published written description may be deemed to give a true account of that oral description or use unless the proprietor of the patent can give good reason why this is not the case. In this case, the opponent must adduce proof to the contrary in respect of the reasons given by the proprietor of the patent. Caution must be exercised when considering the type of evidence presented to substantiate the content of an oral description. For example, a report of a lecture written by the actual person who delivered the talk may not be an accurate account of what was in fact conveyed to the public. Similarly, a script from which the lecturer purportedly read may not actually have been completely and comprehensibly read (see T 1212/97).

In opposition, if the publication date of a document originating from the opponent is in dispute, the opponent must prove that date beyond reasonable doubt. However, if the document is a brochure for advertising, it must be taken into account that such brochures are not normally kept secret for long after printing (T 2451/13, T 804/05, T 743/89).

Question 28

7.5 Internet disclosures

Answer 28

As a matter of principle, disclosures on the internet form part of the state of the art according to Art. 54(2). Information disclosed on the internet or in online databases is considered to be publicly available as of the date the information was publicly posted. Internet websites often contain highly relevant technical information. Certain information may even be available only on the internet from such websites. This includes, for example, online manuals and tutorials for software products (such as video games) or other products with a short life cycle. Hence for the sake of a valid patent it is often crucial to cite publications only obtainable from such internet websites.

Question 29

7.5.1 Establishing the publication date

Answer 29

Establishing a publication date has two aspects. It must be assessed separately whether a given date is indicated correctly and whether the content in question was indeed made available to the public as of that date.

The nature of the internet can make it difficult to establish the actual date on which information was made available to the public: for instance, not all web pages mention when they were published. Also, websites are easily updated, yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public – including examiners – to establish precisely what was published and when.

Neither restricting access to a limited circle of people (e.g. by password protection) nor requiring payment for access (analogous to purchasing a book or subscribing to a journal) prevent a web page from forming part of the state of the art. It is sufficient if the web page is in principle available without any bar of confidentiality.

Finally, it is theoretically possible to manipulate the date and content of an internet disclosure (as it is with traditional documents). However, in view of the sheer size and redundancy of the content available on the internet, it is considered very unlikely that an internet disclosure discovered by an examiner has been manipulated. Consequently, unless there are specific indications to the contrary, the date can be accepted as being correct.

Question 30

7.5.2 Standard of proof

Answer 30

When an internet document is cited against an application or patent, the same facts are to be established as for any other piece of evidence, including standard paper publications (see G‑IV, 1). This evaluation is made according to the principle of “free evaluation of evidence” (see T 482/89 and T 750/94). That means that each piece of evidence is given an appropriate weight according to its probative value, which is evaluated in view of the particular circumstances of each case. The standard for assessing these circumstances is the balance of probabilities. According to this standard, it is not sufficient that the alleged fact (e.g. the publication date) is merely probable; the examining division must be convinced that it is correct. It does mean, however, that proof beyond reasonable doubt (“up to the hilt”) of the alleged fact is not required.

The publication dates of internet disclosures submitted by a party to opposition proceedings are assessed according to the same principles as are applied in examination proceedings, i.e. they are assessed in view of the specific circumstances of the case. In particular, the timing of the submission as well as the interests of the party submitting the disclosure are to be taken into account.

In many cases, internet disclosures contain an explicit publication date which is generally considered reliable. Such dates are accepted at face value, and the burden of proof will be on the applicant to show otherwise. Circumstantial evidence may be required to establish or confirm the publication date (see G‑IV, 7.5.4). If the examiner comes to the conclusion that – on the balance of probabilities – it has been established that a particular document was available to the public at a particular date, this date is used as publication date for the purpose of examination.

Question 31

7.5.3 Burden of proof

Answer 31

It is a general principle that, when raising objections, the burden of proof lies initially with the examiner. This means that objections must be reasoned and substantiated, and must show that, on the balance of probabilities, the objection is well-founded. If this is done, it is then up to the applicant to prove otherwise – the burden of proof shifts to the applicant.

If an applicant provides reasons for questioning the alleged publication date of an internet disclosure, the examiner will have to take these reasons into account. If the examiner is no longer convinced that the disclosure forms part of the state of the art, this disclosure will not be used further as prior art against the application unless the examiner is able to present further evidence to maintain the disputed publication date.

The later the examiner sets out to obtain such evidence, the more difficult it may become. The examiner has to judge whether it is worth spending a short amount of time at the search stage to find further evidence in support of the publication date.

If an applicant refutes the publication date of an internet disclosure with no reasoning or merely with generic statements about the reliability of internet disclosures, this argument will be given minimal weight and is therefore unlikely to sway the examiner’s opinion.

While the dates and content of internet disclosures can be taken at face value, there are of course differing degrees of reliability. The more reliable a disclosure, the harder it will be for the applicant to prove that it is incorrect. The following sections look at the reliability of various popular types of internet disclosure.

Question 32

7.5.3.1 Technical journals

Answer 32

Of particular importance for examiners are online technical journals from scientific publishers (e.g. IEEE, Springer, Derwent). The reliability of these journals is the same as that of traditional paper journals, i.e. very high.

It should be noted that the internet publication of a particular issue of a journal may be earlier than the date of publication of the corresponding paper version. Furthermore, some journals pre-publish on the internet manuscripts which have been submitted to them, but which have not yet been published, and in some cases before they have even been approved for paper publication (for example, the “Geophysics” journal). If the journal then does not approve the manuscript for publication, this pre-publication of the manuscript may be the only disclosure of its content. Examiners must also remember that the pre-published manuscript may differ from the final, published version.

Where the given publication date of an online journal publication is too vague (e.g. only the month and year is known), and the most pessimistic possibility (the last day of the month) is too late, the examiner may request the exact publication date. Such a request may be made directly through a contact form that the publisher may offer on the internet, or via the EPO library.

Question 33

7.5.3.2 Other “print equivalent” publications

Answer 33

Many sources other than scientific publishers are generally deemed to provide reliable publication dates. These include for example publishers of newspapers or periodicals, or television or radio stations. Academic institutions (such as academic societies or universities), international organisations (such as the European Space Agency ESA), public organisations (such as ministries or public research agencies) or standardisation bodies also typically fall into this category.

Some universities host so-called eprint archives to which authors submit reports on research results in electronic form before they are submitted or accepted for publication by a conference or journal. In fact, some of these reports are never published anywhere else. The most prominent such archive is known as arXiv.org (arxiv.org, hosted by the Cornell University Library), but several others exist, e.g. the Cryptology eprint archive (eprint.iacr.org, hosted by the International Association for Cryptology Research). Some such archives crawl the internet to automatically retrieve publications which are publicly available from researchers’ web pages, such as CiteseerX (citeseerx.ist.psu.edu hosted by Pennsylvania State University).

Companies, organisations or individuals use the internet to publish documents that had previously been published on paper. These include manuals for software products such as video games, handbooks for products such as mobile phones, product catalogues or price lists and white papers on products or product families. Evidently, most of these documents address the public – e.g. actual or potential customers – and are thus meant for publication. Hence the date given can be taken as a date of publication.

Question 34

7.5.3.3 Non-traditional publications

Answer 34

The internet is also used to exchange and publish information in ways which did not exist before, via, for example, Usenet discussion groups, blogs, email archives of mailing lists or wiki pages. Documents obtained from such sources also constitute prior art, although it may be more involved to establish their publication date, and their reliability may vary.

The content of a transmitted email cannot be considered to be public merely for the reason that it could have been intercepted (T 2/09).

Computer-generated timestamps (usually seen, for example, on blogs, Usenet or the version history available from wiki pages) can be considered as reliable publication dates. While such dates could have been generated by an imprecise computer clock, this should be weighed against the fact that in general many internet services rely on accurate timing and will often stop functioning if time and date are incorrect. In the absence of indications to the contrary, the frequently used “last modified” date can be treated as the publication date.

Question 35

7.5.4 Disclosures which have no date or an unreliable date

Answer 35

Where an internet disclosure is relevant for examination but does not give any explicit indication of the publication date in the text of the disclosure, or if an applicant has shown that a given date is unreliable, the examiner may try to obtain further evidence to establish or confirm the publication date. Specifically, the examiner may consider using the following information:

(a)
Information relating to a web page available from an internet archiving service. The most prominent such service is the Internet Archive accessible through the so-called “Wayback Machine” (www.archive.org). The fact that the Internet Archive is incomplete does not detract from the credibility of the data it does archive. It is also noted that legal disclaimers relating to the accuracy of any supplied information are routinely used on websites (even respected sources of information such as Espacenet or IEEE), and these disclaimers are not to be taken to reflect negatively on the websites’ actual accuracy.

(b)
Timestamp information relating to the history of modifications applied to a file or web page (for example, as available for wiki pages such as Wikipedia and in version control systems as used for distributed software development).

(c)
Computer-generated timestamp information as available from file directories or other repositories, or as automatically appended to content (e.g. forum messages and blogs).

(d)
Indexing dates given to the web page by search engines (see also T 1961/13). These will be later than the actual publication date of the disclosure, since the search engines take some time to index a new website.

(e)
Information relating to the publication date embedded in the internet disclosure itself. Date information is sometimes hidden in the programming used to create the website but is not visible in the web page as it appears in the browser. Examiners may, for example, consider the use of computer forensic tools to retrieve such dates. In order to allow a fair evaluation of the accuracy of the date by both the applicant and the examiner, these dates can be used only if the examiner knows how they were obtained and can communicate this to the applicant.

(f)
Information about replication of the disclosure at several sites (mirror sites) or in several versions.

It may also be possible to make enquiries with the owner or the author of the website when trying to establish the publication date to a sufficient degree of certainty. The probative value of statements so obtained will have to be assessed separately.

If no date can be obtained (other than the date of retrieval by the examiner, which will be too late for the application in question), the disclosure cannot be used as prior art during examination. If a publication, although undated, is highly relevant to the invention and can therefore be considered to be of interest to the applicant or third parties, it may be cited in the search report as an “L” document. The search report and the written opinion must explain why this document was cited. Citing the disclosure will also make it citable against future applications, using the date of retrieval as the date of publication.

Question 36

7.5.5 Problematic cases

Answer 36

Web pages are sometimes divided into frames the content of which is drawn from different sources. Each of these frames may have its own publication date which may have to be checked. In an archiving system, for instance, it may happen that one frame contains the archived information with an old publishing date whereas other frames contain commercials generated at the time of retrieval. The examiner must ensure that the right publication date is used, i.e. that the cited publication date refers to the intended content.

When a document retrieved from the Internet Archive contains links, there is no guarantee that the links point to documents archived on the same date. It may even happen that the link does not point to an archived page at all but to the current version of the web page. This may in particular be the case for linked images, which are often not archived. It may also happen that archived links do not work at all.

Some internet addresses (URLs) are not persistent, i.e. they are designed to work only during a single session. Long URLs with seemingly random numbers and letters are indicative of these. The presence of such a URL does not prevent the disclosure being used as prior art, but it does mean that the URL will not work for other people (e.g. for the applicant at the time of receipt of the search report). For non-persistent URLs, or if, for other reasons, it is considered prudent, the examiner indicates how that specific URL is arrived at from the main home page of the respective website (i.e. which links were followed, or which search terms were used).

Question 37

7.5.6 Technical details and general remarks

Answer 37

When printing a web page, care must be taken that the complete URL is clearly legible. The same applies to the relevant publication date on a web page.

It has to be borne in mind that publication dates may be given in different formats, especially in either the European format dd/mm/yyyy, the US format mm/dd/yyyy or the ISO format yyyy/mm/dd. Unless the format is explicitly indicated, it will be impossible to distinguish between the European format and the US format for days 1-12 of each month.

If a publication date is close to the relevant priority date, the time zone of publication may be crucial to interpret a publication date.

The examiner must always indicate the date on which the web page was retrieved. When citing internet disclosures, the examiner must explain the prior-art status of the document, e.g.:

(i)
how and where the publication date was obtained (for example, that the eight digits in the URL represent the date of archiving in the format yyyymmdd), and

(ii)
any other relevant information (for example, where two or more related documents are cited, how they are related, indicating for instance that following link “xyz” on the first document leads to the second document).

When citing a multimedia disclosure found on the internet, such as a video or podcast, the division will request capture and storage of electronic evidence suitable to prove its content and availability to the public. If the disclosure later ceases to be available on the internet, such evidence will be made available to the parties to the proceedings concerned on request (see also B‑X, 11.6).

Question 38

7.6 Standards and standard preparatory documents

Answer 38

Standards define sets of characteristics or qualities for products, processes, services or materials (e.g. the properties of an interface) and are usually developed by Standards Development Organisations (SDOs) by consensus amongst the relevant economic stakeholders.

Final standards themselves in principle form part of the state of the art under Art. 54(2), although there are important exceptions. One of these relates to private standards consortia (e.g. in the field of CD-ROM, DVD and Blu-ray discs), which do not publish the final standards but make them available to the interested circles subject to acceptance of a non-disclosure agreement (categorically forbidding the recipients of the documents to disclose their content).

Before an SDO reaches agreement on the establishment or further development of a standard, various types of preparatory documents are submitted and discussed. These preparatory documents are treated like any other written or oral disclosures, i.e. in order to qualify as prior art they must have been made available to the public prior to the filing or priority date without any bar of confidentiality. Thus if a standard preparatory document is cited against an application during search or examination, the same facts are to be established as for any other piece of evidence (see G‑IV, 1 and T 738/04).

The existence of an explicit confidentiality obligation must be determined case by case on the basis of the documents allegedly setting forth this obligation (see T 273/02 and T 738/04). These may be general guidelines, directives or principles of the SDO concerned, licensing terms or a Memorandum of Understanding resulting from interaction between the SDOs and their members. In case of a general confidentiality clause, i.e. one that is not indicated on or in the relevant preparatory document itself, it must be established that the general confidentiality obligation actually extended to the document in question until the relevant point in time. This does not however require the document itself to be explicitly marked as confidential (see T 273/02).

If the preparatory documents are available in the EPO’s in-house databases or at freely accessible sources (for example, on the internet), the examiner is allowed to cite them in the search report and to refer to them during the procedure. The public availability of the documents, if at all necessary, may be further investigated during examination and opposition in accordance with the principles set out above.

While documents in the EPO’s in-house databases are regarded as being available to the public, no general indication can be given for documents obtained from other sources.

Norms and standards are comparable with trade marks in that their content can vary with time. Therefore, they have to be identified properly by their version number and publication date (see also F‑III, 7, F‑IV, 4.8 and H‑IV, 2.2.9).

Question 39

8. Cross-references between prior-art documents

Answer 39

If a document (the “primary” document) refers explicitly to another document (the “secondary” document) as providing more detailed information on certain features, the teaching of the latter is to be regarded as incorporated into the primary document if the document was available to the public on the publication date of the primary document (see T 153/85) (for the state of the art pursuant to Art. 54(3), see G‑IV, 5.1 and F‑III, 8, penultimate paragraph). The relevant date for novelty purposes, however, is always the date of the primary document (see G‑IV, 3).

Question 40

9. Errors in prior-art documents

Answer 40

Errors may exist in prior-art documents.

When a potential error is detected, three situations may arise depending on whether the skilled person, using general knowledge,

(i)
can directly and unambiguously derive from the prior art document that it contains an error and what the only possible correction should be;

(ii)
can directly and unambiguously derive from the prior art document that it contains an error, but is able to identify more than one possible correction; or

(iii)
cannot directly and unambiguously derive from the prior art document that an error has occurred.

When assessing the relevance of a document to patentability,

in case (i), the disclosure is considered to contain the correction;

in case (ii), the disclosure of the passage containing the error is not taken into account;

in case (iii), the literal disclosure is taken into account as is.

For possible errors concerning compound records in online databases, see B‑VI, 6.5. For non-enabling disclosures, see G‑IV, 2.