Artist Bjørn Bjørnholt

Internet Citations as Prior Art -Case law review: T 1134/06

March 2009

Jan Mondrup Pedersen M.Sc. Chemistry and Physics, Ph.D. Synthetic Organic Chemistry Patent Attorney T +45 33 63 93 43 E jmp@pv.eu

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Content

- The invention – virtual stock trade game

- Case history up until appeal

- Decision of the Board of Appeal

- Case history after appeal

- Conclusion

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The invention – virtual stock trade game

1. A game system for providing a game to players based on real data which changes with time reflecting phenomena occurring in real life, said system comprising:

-real data obtaining means for obtaining said real data; -current condition data storing means for storing the current

condition data which represents the current condition of the players in a game space corresponding to said real life space; and

-current conditions evaluating means for evaluating said current condition data based on said real data obtained by said real data obtaining means.

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Case History up until appeal

- EP application filed 10.07.2001 (Japanese priority: 28.07.2000)

- ESR:

- Request for examination filed

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Case History up until appeal

- 1st examination report highlights three documents D1-D3 taking

away inventive step for the claimed subject matter (D3 being the börzenspiel.de internet reference)

- In response the applicant amend the claims. An “efficiency information producing means” feature is added to new claim 1 to distinguish it from D3.

- 2nd examination report withholds that the internet citation D3 removes inventive step. The added feature “efficiency information producing means” is considered a game rule, not a technical contribution.

- Applicant requests a decision, patent is refused on grounds of D3.

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Case History up until appeal

- Notice of appeal is filed, partly on grounds of the applicant not being

able to retrieve the archived webpages of D3:

- No claim amendments are submitted with the appeal

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Decision of the board of appeal (T1134/06)

- The Board of appeal only evaluates the admissibility of the

internet citation – the substantive grounds of appeal are not commented on. The following is discussed:

- Internet citations Vs “traditional” prior art (patents and articles) is discussed in general terms

- The specific website – archive.org - is discussed with respect to reliability as prior art

- The sparse amount of case law available is reviewed - The PCT guidelines on internet citations are discussed - A decision on admissibility of D3 is made in light of the above

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Traditional publications Vs internet as prior art

- Journals and patents :

- Perceived as independently verifiable, hence reliable. This is mainly due a large number of physical copies, or that the source is trusted e.g. a public authority.

- Date of publication and content are presumed truthful, and burden of proof lies with anyone who challenges this.

- The internet:

- Has recognized reliability and security issues - Notoriously insecure against unauthorized access - Inherently transient nature with a continuous flux of data - The only certainty of a website’s availability and content

is the “real-time” certainty, i.e. the moment it is viewed

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How reliable is the www.archive.org wayback machine?

- General affidavit from archive.org: ….The Internet Archive assigns a URL on its site to the archived files in the

format http://web.archive.org/web/[yyyymmdd][hh:mm:ss]/[Archived URL]

Thus, the Internet Archive URL http://web.archive.org/web/19970126045828/http://www.archive.org/ would be the URL for the record of the Internet Archive home page HTML file

(http://www.archive.org/) archived on January 26, 1997 at 4:58 a.m. and 28 seconds.

Typically, a printout from a Web browser will show the URL in the footer. The date assigned by the Internet Archive applies to the HTML file but not to image files linked therein. Thus images that appear on the printed page may not have been archived on the same date as the HTML file. Likewise, if a website is designed with "frames," the date assigned by the Internet Archive applies to the frameset as a whole, and not the individual pages within each frame….

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Case law on internet citations

- Only sparse amounts of case law exists (2006)

- In T91/98 and T373/03 (EP, both unpublished) documents

retrieved from the internet were not excluded per se, but the date of availability could not be determined with the required degree of certainty

- The Bundespatentgericht have twice ruled that the internet is not a reliable source for determining the state of the art (BPatG 17W (pat) 1/02 and 47/00)

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The PCT guidelines on internet citations

- The PCT guidelines (although not binding to the EPO)

specifically deals with disclosures from the internet

- PCT guidelines (11.13-11.20) distinguishes websites of “trusted publishers” and web sites of “unknown reliability”, archive.org belonging to the latter category

- Only “sounds reasons” not “proof” is needed for the rebuttal of evidence from commercial internet archiving sites

- The EPO guidelines are silent on internet citations but states that when date of publication is doubtful “additional documents providing evidence…” are required

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BoA’s general conclusion on internet citations

- If an internet disclosure is to be used as prior art a strict standard of

proof should be adopted, i.e. content and publication date should be beyond any reasonable doubt

- Normally the evidence should meet the criteria already set out for prior use and oral disclosures, i.e. answer the questions of when, what and under which circumstances was this made available to the public

- In cases of reputable or trusted publishers supporting evidence can however be dispensed with (e.g. online versions of paper publications)

- In the case of “internet archive” sites further supporting evidence should be provided, such as authoritative statements

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BoA’s conclusion on the specific reference D3

- Evidence regarding date of availability is based on two URL’s

(URL1 and URL2) and a date mentioned in a FAQ page of D3 – the examiner concludes that “the availability is made sufficiently plausible” hereby. This entails implicit assumption that the dates provided by archive.org are accurate, which is problematic because:

- URL1: http://web.archive.org/web/20000620174023/http://www.boersenspiel.de presently links to a different webpage, and some links do not work, i.e.

D3 is no longer available at the stated URL - URL2 & FAQ: http://web.archive.org/web/*/http://www.boersenspiel.de Does not list the given date in URL1, i.e. June 20th 2000. URL2 also

shows that the website have been continuously updated, indicating that the game may have changed too, hence the date in the FAQ for the startup of “the game” is meaningless as the game may change over time.

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BoA’s conclusion on the specific reference D3

- The board of appeal concludes that for D3 to be admissible

supporting evidence must be provided, in the form of e.g. - An authoritative statement from the publisher of archive.org

- Statements/evidence from original publisher or current manager

of boersenspiel.de

- Additionally, as the actual game is not provided in the archived pages, a statement from the publisher of boersenspiel or a player having played the game at the time would provide further support for the existence of the game

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Final decision of the BoA

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Case history after appeal

- New 1st examination report dispatched containing D4 which constitutes a new set of URL’s from archive.org (technical reasons?) of earlier date and an affidavit from the manager of archive.org. Same lack of inventive step arguments as earlier.

- In the response the applicant appears to accept D3/D4 and argues for inventive step of the “efficiency information producing means” feature over D4.

- Summons for oral proceedings is followed by withdrawal of request for oral proceedings and request for a decision by the applicant.

- Grant is refused on grounds of lack of inventive step.

- ….Appeal?

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Conclusion

- The EPO regards internet prior art as analogous to prior use or oral disclosures.

- Therefore, the criteria of when, what and under which circumstances the prior art was disclosed needs to be applied to such documents.

- The burden of proof with respect to these criteria lies with anyone presenting such prior art including the EPO.

- Pages from internet archives/web-crawlers are presently considered to fulfill the above criteria when combined with an affidavit from the publisher, and can be used as valid prior art.

- The above is in spite of apparent shortcomings of these archives, and it may be worth highlighting this if advantageous.