Internet as a source of prior art
In the context of patent law, using the Internet as a source of prior art when assessing whether an invention is novel and inventive, is problematic since it is often difficult to ascertain precisely when information on websites became available to the public. Case law relating to the evidentiary value of information retrieved from the Internet is sparse but concludes that using the Internet is acceptable provided that the date of a particular disclosure can be reliably determined.
In most patent laws, an (alleged) invention must be new and inventive (or non-obvious, which is basically synonymous of inventive) to be considered patentable, i.e., to be validly patented. An invention is considered new if it does not form part of the prior art (or state of the art), i.e., if it was not already disclosed in the prior art. An invention is considered inventive if it is not obvious in view of the prior art. The prior art is essentially everything available to the public before the filing date of the patent.
In practice, if a device or a method was already known (e.g. described in a scientific paper) before the filing date of the patent covering the device or the method or if the device or method is obvious in view of what was known before the filing date, then, in general, it is not considered new (because known before the filing date) or not considered inventive (because obvious in view of what was known before the filing date of the patent), and then not considered patentable. A patent cannot be obtained for the device or method, or, if obtained (granted), it can generally be "invalidated".
The identification of the prior art is therefore of utmost importance to determine whether an invention is patentable, i.e. whether a patent can be granted for an invention (or whether a patent granted for an invention is valid). The purpose of the novelty criterion is to prevent the prior art being patented again.
The Internet is a popular source of technical information and is of particular interest for the purposes of establishing the prior art. Its use is however surrounded by concerns as to its reliability.
European Patent Organisation
Board of Appeal 3.2.04 of the European Patent Office (EPO) in decision T 1134/06 considered that
- "there are recognized reliability and security issues concerning the Internet and the web and information retrieved from them. (...) It is thus at the present state of affairs often very difficult to establish with a high degree of reliability what exactly appeared on a web site and when."
In particular, the Board considered the evidentiary value of information from web pages retrieved on the Internet Archive. The Board found that previous case law decisions did not find that the information retrieved from the Internet was excluded per se.
- "A disclosure on the Internet may be comprised within the state of the art... If an Internet disclosure is to be used as prior art a strict standard of proof should be adopted. Thus, the fact that an Internet disclosure is state of the art ... should be proved "beyond any reasonable doubt". The particular facts and evidence required will depend on each individual case, but will normally have to ... answer the questions of when the Internet disclosure was made available to the public, what was made available and under which circumstances was it made available to the public. Concerning the latter question, it will in most cases be necessary to address the main concern of reliability surrounding the Internet, in particular so as to establish whether and in how far a retrieved disclosure is true to the disclosure appearing at that date."
Regarding the Internet Archive, the Board finally held that
- "Where a disclosure has been retrieved from [such a resource], further evidence concerning the history of the disclosure, whether and how it has been modified since the date it originally appeared on a web site will be necessary. This could be in the form of an authoritative statement from the archivist. Alternatively, an appropriate statement as to the content, either from the owner or author of the archived web site which included the disclosure may suffice."
According to David Rogers, Legal Member of a Board of Appeal at the EPO, "practitioners who are looking for ‘killer’ prior art would be well advised to stick with the traditional print means, unless they have a considerable body of evidence to support the reliability of an internet disclosure. The case also sets out how a party can cast doubt on the reliability of such disclosures."
Meanwhile, in August 2009, the EPO published a "notice concerning internet citations" to "[set] out the practice followed at the EPO when citing documents retrieved from the internet in both the European and the PCT procedure." The notice is not binding on the Boards of Appeal. Regarding the standard of proof, the notice reads:
- "When an internet document is cited against an application or patent, the same facts are to be established as for any other piece of evidence, including standard paper publications ... This evaluation is made according to the principle of "free evaluation of evidence" ... That means that each piece of evidence is given appropriate weight according to its probative value, which is evaluated in view of the particular circumstances of each case. For assessing these circumstances, the balance of probabilities will be used as the standard of proof, as generally applied by the boards of appeal. According to this standard, it is not sufficient that the alleged fact (e.g. the publication date) is merely probable; the examining division must be convinced that it is correct. It does mean, however, that proof beyond reasonable doubt ("up to the hilt") of the alleged fact is not required." 
In 2012, Board of Appeal 3.5.04 issued two decisions, namely T 1553/06 and T 2/09, on the issue of Internet disclosures. The two decisions originate from a contrived test case built by the parties, i.e. the patent proprietor and the opponent. In decision T 1553/06 (page 72), the Board proposed a test to decide whether a document stored on the World Wide Web has been made available to the public, whereas, in decision T2/09, the Board dealt with the alleged public availability of an email transmitted over the Internet.
The EPO Guidelines now cite the Internet Archive as well as Wikipedia as possible and credible sources of prior art.
In 2002, "the Bundespatentgericht in case BPatG 17W (pat) 1/02 (see GRUR 2003 Heft 04, pp 323-325) confirmed in later BPatG 17W (pat) 47/00, ruled that the Internet was not a reliable source for determining the state of the art. This applied also to web archives such as the Internet Archive."
Internet publications can be relied on as prior art under United States patent law. The effective date of the publication will be determined by evidence, such a date of posting listed in the publication itself, or a date of archiving in the Internet Archive.
In August 2006, the United States Patent and Trademark Office (USPTO) ordered examiners to stop using Wikipedia as a source of information for determining the patentability of inventions. However, according to The Patent Librarian's Notebook's blog, examiners continue to cite it, and the number of United States patents issued in 2008 that cited Wikipedia articles nearly doubled to 477, compared to 2007. It increased to 809 citations in 2009.
- (German) Bundespatentgericht Beschluss vom 17.10.2002 17 W (pat) 1/02 Verfahren zum Vorabspeichern von Computernetzwerk-Information JurPC Web-Dok. 121/2003
- Decision T 1134/06 of the Boards of Appeal of the European Patent Office, January 16, 2007.
- (German) Klicznik, Alexander (2007). Neuartige Offenbarungsmittel des Standes der Technik im Patenrecht. Heymanns. ISBN 978-3-452-26714-6.
- T 1134/06, Reasons 3.2: "It is thus at the present state of affairs often very difficult to establish with a high degree of reliability what exactly appeared on a web site and when."(emphasis added)
- T 1134/06, Reasons 3.3
- See for instance, in the European Patent Convention (EPC), Article 54(1) EPC.
- See for instance, in the EPC, Article 56 EPC.
- The definition of the prior art, i.e. what is part of the prior art and what is not part of the prior art, however depends on the legislation considered, since patent laws are essentially territorial in nature.
- or priority date.
- Case Law of the Boards of Appeal of the European Patent Office (Fifth edition 2006), pages 46-47. (pdf 4.1 MB).
- T 1134/06, Reasons 3.6.
- T 1134/06, Reasons 3.2.
- T 1134/06, Reasons 3.3.1.
- T 1134/06, Reasons 4.2.
- David Rogers, Documents on the internet as prior art, Journal of Intellectual Property Law & Practice, Vol. 2 No. 6, June 2007, pp. 354-355.
- EPO, Notice from the European Patent Office concerning internet citations, Official Journal EPO, 8-9/2009, 456. See also EPO practice on internet citations, Patent Information News issue 3/2009, p. 2.
- Article 23(3) EPC
- Notice from the European Patent Office concerning internet citations, section 3.2.
- Laurent Teyssedre (18 April 2012). "T1553/06 : accessibilité de documents sur internet" [T1553/06 : accessibility of documents on the Internet]. Le blog du droit européen des brevets (in French). Retrieved 21 April 2012.
- Laurent Teyssedre (17 April 2012). "T2/09 et T1553/06 : une opposition "test-case" est recevable" [T2/09 and T1553/06 : a "test-case" opposition is admissible]. Le blog du droit européen des brevets (in French). Retrieved 21 April 2012.
- Guidelines for Examination in the EPO, section g.iv.7.5.4 : "Disclosures which have no date or an unreliable date"
- MPEP 2128 "Printed Publications" as Prior Art
- Woellert, Lorraine (2006-09-04). "Kicking Wiki Out Of The Patent Office". Business Week. Retrieved 2009-02-28.
- White, Michael (2009-02-15). "Wikipedia References Increase". Retrieved 2009-02-28.
- White, Michael (2010-01-07). "Wikipedia Citations in Patents Up 59 Percent". Retrieved 2010-02-03.