Internet-hosted prior art and proof of publication: UK not bound by EPO level of proof

In a recent hearing concerning a UK patent application, Ranger Services Ltd's application, BL O/362/09, 17 November 2009, Hearing Officer Lawrence Cullen was faced with a question relating to the status of cited prior art which had been obtained from an internet archive. Rejecting the application before him, which was for a system of using an automatic number plate recognition system to detect cloned vehicle number plates, he considered that the current European Patent Office guidelines [see earlier IPKat post here] would suggest that the cited prior art should be taken into account. In doing so, he rejected the applicant's submission that the EPO's guidelines demanded proof beyond reasonable doubt as to the date on which the cited prior art was made available to the public. While it was relevant and appropriate to take note of EPO practice, Dr Cullen said, it wasn't binding in the United Kingdom, where the civil proof merely required that facts be established on the balance of probabilities:
"While it is relevant and appropriate for me to take note of EPO practice in such matters, it does not bind me in the way that UK law does. The maxim of the English Courts in civil matters is that the correct assessment to be made is on the “balance of probabilities”, whereas in criminal matters, it is one of “proof beyond reasonable doubt”. In this case, the recent EPO note would appear to support that this view, despite Mr Hirsz’s argument to the contrary, and I must therefore decide the issue on “the balance of probabilities”" (para.47).
The IPKat notes that, even if the cited prior art had been excluded, the patent application would still have failed under the Patents Act 1977, s.1(2) since the invention concerned the performance of a mental act and/or a computer program as such, both of which are excluded subject-matter everywhere in Europe. Merpel wonders, what is the standard of proof in other jurisdictions? There really should be consistency as between patent-granting regimes and this is just the sort of question where a conveniently arbitrary ruling for all might be handy.

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Internet-hosted prior art and proof of publication: UK not bound by EPO level of proof Internet-hosted prior art and proof of publication: UK not bound by EPO level of proof Reviewed by Jeremy on Friday, November 20, 2009 Rating: 5


  1. Yet another software patent.

  2. According to the literature I found, it is the "beyond reasonable doubt" standard that applies in the patent grant procedure under German law.
    That is because the patent grant procedure is basically public administrative law, and not, as the Hearing Officer suggests, a civil matter. The issue is a bit controversial, but rarely discussed.

  3. Since the application has been refused, a software patent, or any other kind of patent for that matter, is precisely what it is not.

  4. really highlights the difference between "beyond reasonable doubt" and "balance of probabilities".

    On balance of probabilities is generally reliable since the methodology employed by to archive web documents is reasonably consistent and rigorous.

    However, the analysis of conducted in the EPO Konami decision is such as to introduce reasonable doubt that can render it unreliable using the "beyond reasonable doubt" standard of proof. In particular, the fact that links within documents archived on a first date can lead to other documents archived on a second date.

    All that said, adopting the criminal standard of proof for such things makes no sense - at least not in the UK.

  5. "An apparatus comprising: a first ANPR camera, a second ANPR camera, a database and a processor".

    Doesn't seem like a 'mental act as such' to me. How would one possibly perform the claimed invention in one's head?

    Just shows how silly the 'contribution' approach is.

  6. Standard of proof in Singapore is the same as that in UK:

    It is the "balance of probabilities" for the civil matters

    "proof beyond reasonable doubt" for the criminal matters.

  7. @Anon of 12:10PM: what patent. (True, the FFII counts published applications as patents.)

    @Scott Roberts:
    I agree that the linking issue in the Konami case may indeed be sufficient reason to require further evidence of the publication of the relevant document in that case. However, would it not be possible to argue this while still using "balance of probabilities" as standard of proof?

    It just seems odd to me that the standard of proof would be determined by the reliability of the evidence. In my view, unreliability should not result in raising the required standard of proof, but (if sufficiently unreliable) in not meeting the same standard of proof as used for (and met by) "reliable" evidence.

    In T 1134/06 the Board seems to suggest that "balance of probabilities" can only be used for documents like patent documents that evidently meet this standard (as regards publication date). That doesn't make sense to me.

    @Anon of 7:19PM:
    The contribution approach indeed. Of course the practical result using the EPO approach should be the same for this case (as in most cases). Actually I'm pretty sure that in cases where the outcome does differ it's not because of the difference in approach, but because of a different view of what is technical. See for example T 49/04 and T 1143/06: comparable facts, same approach, different result.

  8. wow, the Patents Act is older than I thought :-)

  9. The New Zealand Commissioner of Patents is required to give the applicant the benefit of any reasonable doubt as to whether something is patentable.

    The NZ Patents Act 1953 is based on the long-since repealed UK Patents Act 1949 and the NZ courts have approved the ‘benefit of the doubt’ standard applied by the UK courts under the 1949 UK Act.

    Legislation to replace the Patents Act 1953 is currently being considered by a parliamentary select committee and proposes to replace the benefit of the doubt standard with a balance of probabilities approach.

  10. Having successfully defended an opposition in NZ and successfully enforced in SG a same 'software patent', in each case involving essentially the same 'evidence' and prior art, I can fully support Aaradhana and Adrian Evans respective comments about SG and NZ.

    However, on the basis of the AU opposition (still in respect of the same 'software patent', still involving essentially the same 'evidence' and prior art), IP Australia, which also relies upon the balance of probabilities approach, came to adifferent conclusion about the evidence relative to the NZ IPO and the SG High Court (and CA), anecdotally showing that the NZ 'benefit of the doubt' approach appears (as expected) to benefit the patentee somewhat more, and that a sandardised application of the 'balance of probabilities' test offers no guarantees about its outcome in different jurisdictions, given an identical set of circumstances.


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