Website and Email Prior Art: What's Publicly Available?

There has been uncertainty as to whether email and, under what circumstances, web pages become part of the state of the art under Article 54(2) EPC. Two recent appeal decisions (T-0002/09 and T-1553/06) relate to patent applications intentionally filed as test cases to attempt to provide clarity on these issues.

Web pages

How accessible does a web page need to be to be publicly available under Article 54(2) EPC? Should factors such as whether the web page can be found by entering keywords into a search engine and the length of time which the web page was on the internet be taken into consideration?

The answers to such questions were sought in the opposition test case behind decision T-1553/06. As explained below, the answer lies in whether there is direct and unambiguous access to the content of the web page.

Background to the appeal

Prior to filing the patent application in issue, the patentee and opponent colluded to place four different disclosures on the internet under different circumstances. The opponent then accessed the webpages ‘I1’, ‘I2’ and ‘I4’ prior to filing in front of a notary and the print outs were notarised.

The decision

In deciding whether or not a web page was available to the public, the Board dismissed arguments presented by the patentee as to whether finding the web page amounted to undue burden stating:

as the Enlarged Board ruled that applying the concept of novelty must not depend on an element of subjectivity, such element must not only be excluded in determining the availability of information which is accessible and derivable from a means of disclosure … but also in the preceding stage of determining the accessibility of such means. In both situations the degree of burden involved is in principle irrelevant to the determination of what constitutes prior art.

The Board considered that the decisive factor is the practical possibility of having access to the means of the disclosure. Seeking to avoid “hidden disclosures” being considered prior art, the Board stated that the public should be aware of the means of disclosure and have access to the means of disclosure.

Drawing on previous case law (such as G 1/92 and T-0952/92), the relevant criterion is whether there is direct and unambiguous access by at least one member of the public to the means of disclosure:

If… 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 the 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,

then the document was made available to the public in the sense of Article 54(2) EPC 1973.

However, failure to meet either 1. or 2. does not mean that the document was not made available to the public, as it must then be examined if other circumstances provide direct and unambiguous access. Other circumstances may include whether there was written or oral disclosure of the URL, the presence of the URL on a web page available to the public and publication of the document in a web-based discussion forum.

Access via a search engine and all keywords relating to the essence of the content

It was considered whether a URL alone could be sufficient to provide direct and unambiguous access to a web page:

The Board cannot exclude that there might be URLs which are so straightforward, or so predictable, that they could readily be guessed exactly and thus be regarded as providing direct and unambiguous access to web pages at those URLs. However, this is conceivable only in exceptional cases.

Therefore, in most cases, proof of direct and unambiguous access such as through a publicly available search engine is required. The Board further stated:

For the sake of completeness, the Board observes that the situation in which a URL must be guessed in order to access a web page is analogous to the situation in which access to the document is protected by a password which members of the public have no means of obtaining except by guessing.

This is an interesting comment, particularly in view of the earlier comment that it is possible for exceptional URLs to be able to provide direct and unambiguous access. However, it appears that this analogy may not be entirely accurate. For instance, the placing of an obvious password onto a document could still convey to the guesser that the content of the document is not intended to be freely available. This is not the case with a URL.

Considering the keywords used to provide access to the document through a search engine, the Board concluded that these must all relate to the essence of the content of the disclosure to ensure that effectively hidden publications cannot be cited as prior art under Article 54(2) EPC.

Application of the test to I1 and 12

Evidence was filed to show that webpage I1 could be found via the AltaVista search engine using content related keywords on 15 November 1999 (i.e. comfortably before the priority date of 1 February 2000).

The webpage I2, which had with the same URL as I1, contained the content of I1 with an added section and evidence was filed to show that this content was accessed on two occasions via the AltaVista search engine using content related keywords. The webpage was first accessed on 12 January 2000 and subsequently accessed on 31 January 2000.

The Board concluded that the periods over which I1 and I2 were available (the shortest of which was just under three weeks) were long enough for a member of the public to have direct and unambiguous access.

Application of the test to I3

Evidence was filed to show that webpage I3 could be found at the URL http://www.gironet.nl/home/mor... for a period of 20 minutes only on 31 January 2000. No evidence was filed that this webpage could be obtained by carrying out a search in a search engine using keywords and the patentee admitted that I3 was not indexed by any search engine.

I3 was considered not to be available to the public because the opponent had failed to prove that it was either indexed or straightforward to guess the unpublished URL.

Consequences of this decision

The decision has provided some guidance as to when and under what circumstances webpages are considered publicly available with the key test being whether there is direct and unambiguous access to the means of disclosure. In this case a period of accessibility of just under three weeks for a document which could be accessed through a search engine using keywords related to the essence of the disclosure was deemed to make that document publicly available. How much shorter this accessibility period could be remains a moot point.

However, this decision has also confirmed that, in practice, the use of webpages as prior art is likely to be limited. For example, searching for prior art to be used in an opposition necessarily occurs at least 18 months after the filing or priority date of the patent to be opposed. By then, it may be difficult to establish that a particular webpage existed with a specific content prior to the priority date and to prove that the webpage would have been found on a search engine using content related keywords.

Emails

In the second test case (T0002/09) at issue was whether sending an email over the internet could make the content of the email available to the public. In this case, the documents considered related to interception of encrypted and non-encrypted emails.

The Board considered whether and under what circumstances it would be legal to intercept email, before deciding that regardless of the lawfulness of the interception absolute confidentiality should be granted for intercepted emails:

The Board would not accept any ensuing public availability… This is because, in the Board’s view, the practical and effective protection of the fundamental rights enshrined in Article 8 of the European Convention on Human Rights (ECHR) would be jeopardised if information obtained in violation of this provision could be relied on to the detriment of those for whom the rights were designed.

The Board concluded that making emails publically available would breach the right to respect under Article 8 ECHR that everyone has for his private and family life, his home and his correspondence.

Useful links

Decision T-0002/09: http://dycip.com/t000209dec

Decision T-1553/06: http://dycip.com/t155306dec

Decision G 1/92: http://dycip.com/g192dec

Decision T-0952/92: http://dycip.com/t095292dec