Emails: are they "public" for European patent purposes?

When is an electronic communication published? From Martin Kirk (a senior patent attorney in the DSM Expert Centre, Urmond) comes news of some fascinating European Patent Office determinations regarding the legal status of email messages that have been transmitted via the internet: do they constitute public disclosures or not? In short, the EPO's Technical Board of Appeal (TBA) has held that emails sent via internet are not deemed public (T 0002/09) -- but there is now a new test to assess in practical terms whether documents that have been uploaded to the web are deemed public (T 1553/06).  Martin, who was involved in these decisions, explains as follows:

 Background 

These appeals were from patent applications which had been filed in order to create legal test cases, an idea suggested by the VNO (the Dutch equivalent of the Confederation of British Industry). Philips filed a patent application on 1 February 2000 relating to a black and white display and my employer DSM agreed to act as opponent. The parent was EP1006733 and a later divisional was filed as EP1263240. Disclosures of the exact wording of different claims were made via email (encrypted and non-encrypted) and also posted on the web (to various urls and removed after various periods, including in one instance after only 20 minutes). The case was set up so technical issues about the invention were eliminated as far as possible (which is just as well -- as I am a chemist by training!) so we could concentrate on the legal issues. The divisional was filed so we could split the issues into seperate appeals for web disclosures (T 1553-06 from EP1006733 ) and for email disclosures (T 0002/09 from EP1263240). These decisions aren't yet available on the EPO's TBA database, though they are available on the file wrapper of each patent application. Each 90+ page judgment provides a very through and fair summary of the arguments and issues raised by both parties. the main points are: 

(i) Test cases are allowed. In the summons to oral proceedings the TBA had suggested that both appeals might have been inadmissible, being ''non-contentious',' given the VNO's involvement with both parties (DSM and Phillips). Thankfully the TBA decided to consider the issues on their merits.

(ii) T 0002/09 held that emails sent over the public internet (i.e not via an internal company intranet) are not deemed public. This is true even if there was a lawful reason to intercept emails (eg at ISP). The TBA was invited to assess confidentiality of emails based on their content and the nature of sender and recipent but they rejected this approach, preferring to grant emails absolute confidentiality. 

(iii) T 1553/06 helpfully proposed a two-part test to asssess whether web documents were public (see below). They specifically considered (6.7.4. on p.74) and rejected various other possible tests suggested by Philips or DSM (providing a further guide to the criteria which are not considered relevant for web publication). 

The TBA held that availability to the public comprises a two stage assessment: (i) means of disclosure and then (ii) what information is accessible and derivable from (i). Though the TBA accepted (following G 1/92) that there can be no subjective element to novelty and that the degree of burden for public to access information is irrelevant, nevertheless it held that availability on web cannot be just theoretical but also practical -- as otherwise there could be ''hidden publications'' on the web. There must be ''direct and unambiguous access'' to a web document. 

TBA test was (see p.72 of decision) 

''If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and 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 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 the TBA also remarked the contrived nature of the facts of this test case may make it less relevant to real-world situations. In real life the standard and burden of proof required to show what was disclosed in a web document (often many years after the event) may be the main issue. Here we used a notary public to record carefully at the time (November 1999 to January 2000) which documents were uploaded and removed from the web and whether they were capable of being found at certain times before the filing date (1 February 2000) using keyword searches with various search engines (this was done pre Google!)". 

The IPKat is delighted to have received this information. Although, left to himself, he thinks he would have guessed more or less the same solution as that adopted by the TBA (as many other readers would probably also have done), he is the first to concede that his guesses have little or no precedental value, so it's good to see how these decisions have panned out.  Merpel is suddenly getting suspicious about collusive or friendly litigation: do you suppose, she wonders, that Budweiser v Budweiser was a crafty attempt to discover the deeper meaning of trade mark law ...?