Don’t Let Leaked Information Wipe Out Your Patents
Before the advent of the Internet, publication of information to a global audience used to require significant planning and financing. This meant that it was difficult for an individual to publish information that was subsequently seen globally. However, the Internet has changed that. It is now possible to publish information to a global audience instantly and with very little effort.
It is an unfortunate effect of this ease with which information can be disseminated globally that information can also be leaked easily. The leaked information may relate to an exciting new product or unique feature of a product and may be provided by a single developer working for a manufacturer.
Leaked information may only have been initially published on a single website, but within a couple of hours, this information will be disseminated over hundreds of websites across the world.
These leaks are not only potentially damaging from a commercial perspective, by giving away information about future products, but also potentially damaging from a patent perspective, as these leaks may constitute a public disclosure and thus prejudice any future European patent applications directed to the new product or unique feature within a product. In other words, the leak may make any subsequent patent application directed to that exciting unique feature worthless. This is particularly damaging if the exciting new feature would make consumers choose a product from one manufacturer over another manufacturer as the monopoly right provided by the patent is destroyed, leaving competitors to incorporate this exciting new feature in their products.
In this article, we investigate how to deal with these leaks from a patent perspective.
As most of these disclosures occur on the Internet, we should first examine how the European Patent Office (EPO) deals with Internet disclosures.
The Internet is, by its very nature, a large and constantly evolving entity. It is very difficult to determine with any degree of certainty what information was disclosed and when that information was disclosed. These questions can be answered to some extent using Internet archiving tools such as The Wayback Machine which automatically trawls the Internet and takes snapshots of webpages at different times.
But notwithstanding what can be shown to have been disclosed on the Internet, the question to be answered is, “was this disclosure made available to the public?”. The leading case at the EPO is T1553/06. Although the specific case is beyond the scope of this article, this case has a test that determines whether a specific Internet disclosure was made available to the public. An Internet disclosure is made available to the public:
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, then the document was made available to the public in the sense of Article 54(2) EPC 1973.
If any of conditions (1) and (2) is not met, the above test does not permit to conclude whether or not the document in question was made available to the public.
In many instances of leaks, the leaked information is published on specific technology websites. Many of these websites rely on having a high position on search results. Therefore, these websites typically use very pertinent keywords and maintain their articles for many years. In many instances, therefore, it may be argued that the leaked disclosure on these technology websites is made available to the public and is therefore prejudicial to a later filed patent application.
Breach of confidence
Unfortunately, the European Patent Convention (EPC) does not provide a grace period for filing applications after disclosures. However, Article 55 of the EPC does allow that where there has been a disclosure due to an “evident abuse” in relation to the applicant, then such disclosure will not be seen as prejudicial to the patent application as long as the European patent application is filed within six months of such disclosure. In other words, for a leaked disclosure not to be prejudicial to a European patent application, two criteria need to be met.
- The European application must be filed within 6 months of such a disclosure. It is very important to note that the priority date is not taken into account when calculating this date. Therefore, the European application must be filed within six months of the disclosure irrespective of any priority date.
- There needs to be an “evident abuse” in relation to the applicant. Case law has developed in this area which suggests that the “abuse” requires actual intent to harm or actual knowledge that harm would or could be expected from a planned breach of confidence (see, for example, case T436/92). In other words, if the developer leaking the information to a website could expect harm from leaking the information, then it may be argued that this is an “evident abuse” in accordance with Article 55 EPC and then such disclosure would not prejudice the patent application.
Ideally, no developer will leak information about upcoming products. However, such is the desire for upcoming products, leaks are difficult to stop. In the event of a leak, it is important to identify when a leak has occurred and to mitigate the damage from such a leak.
In order to identify when leaks do occur, it is possible to set up a Google alert. These provide email alerts when relevant content appears on the Internet. It may be possible to identify leaked information from these alerts. Once a leak has occurred, steps can be taken to mitigate the damage from the leaks.
In order to mitigate the damage from such leaks, if Europe is an important market, it is vital to file the European patent application within six months of the leaked disclosure.
In order to argue that such disclosure was an “evident abuse” it is also important to show that any person who leaked the information had actual knowledge that harm could or would be expected as a result of the leak. As it is almost impossible to identify the source of a leak, it is desirable to show that all developers are regularly told about the damage that can be caused by leaks. Therefore, it is important to keep a record of not only what was leaked, but also to record what education developers have received showing that harm could or would be expected as a result of a leak.
It may be difficult to stop leaks, but when they do occur, it is important that your patent application is not washed away in any resulting flood.