The Board of Appeal of the European Patent Office has ruled on the prior art effect of electronic communication in a pair of test cases. These test cases (T2/09 and T1553/06) were initiated by Philips Electronics and DSM under the aegis of the Dutch organization of entrepreneurs.
The first case, T1553/06, concerned “publications” that were created prior to filing the patent application, including placing claim 1 on a publicly accessible web page that could be found by a search engine and placing claim 3 on a publicly accessible web page that could not be found by any search engine.
The Board relied on a principle that a publication is prior art (“made available to the public”) only if “direct and unambiguous access” to that publication is possible. A mere theoretical possibility of access is not always sufficient. The board held that this meant that the fact alone that a document existed on the World Wide Web is not sufficient to consider the document prior art. Similarly, the mere existence of undisclosed URL (textual address) of the web page was insufficient to qualify the document as prior art, except for exceptional cases where the URL is so straightforward, or so predictable, that it could readily be guessed exactly.
In contrast, web pages that could be found by a search engine can indeed form prior art, but the board observed that this was not always the case. The board recognized a public policy interest in preventing prior art effect of “hidden publications” of which only the authors had proof that they had been publicly accessible on the Internet, to be used at the author’s whim. The board formulated a test to distinguish prior art from non-prior art web pages:
“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, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document”.
If any of conditions (1) and (2) is not met, the test did not permit to conclude whether or not the document in question was made available to the public. In such a situation, in particular where condition (1) is not met, it must be examined on a case-by-case basis whether there were other circumstances possibly providing direct and unambiguous access to the document, such as a written or oral disclosure of the URL, the presence of the URL (e.g. in a hyperlink) on a webpage available to the public, the document being accessible via a public web search engine not using keywords as search inputs (e.g. based on similarities between images), publication of the document in a Web-based discussion forum.
The second case, T2/09, concerned the question whether an e-mail could be prior art merely because it had been sent, that is, even if neither the recipient nor the sender communicated the e-mail to others. Various theories were presented why transmission of an e-mail might be prior art: service provider personnel can access e-mail data, the e-mail might travel through jurisdictions where access to e-mail is not unlawful, and law enforcement officers might be allowed to access e-mails.
The board held that mere transmission of an e-mail did not make the e-mail prior art. This was already so because of the criterion formulated in T1553/06: one cannot publicly search for e-mails. But the board also indicated a number of legal reasons why e-mails should not be considered to be made available to the public.
The board warned that the circumstances of the cases were highly artificial and that in practical cases the issue will usually not be reached because it will be difficult to meet the standard of proof to show the existence of such publications.