Don’t let leaks wipe out your patents
The internet has changed the ease with which information can be published. Here, Jonathan Jackson, Partner D Young & Co LLP, looks at the effects of this on patent protection.
It is an unfortunate effect of the 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 The ease with which information can be disseminated globally over the internet also means it can be leaked easily. The leak may relate to a new product or unique feature and may often 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, can be disseminated 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 unique feature totally worthless. This is particularly damaging if the feature would make consumers choose one product over another,as the monopoly right provided by the patent is destroyed, leaving competitors free to incorporate this new feature.
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 constantly evolving, making it very difficult to determine with any degree of certainty what information was disclosed and when. These questions can be answered using Internet archiving tools such as The Wayback Machine, which automatically trawls the Internet and takes snapshots of webpages. But notwithstanding what can be shown to have been disclosed, the question to be answered is, "was this disclosure made available to the public?"
The leading case at the EPO is T1553/06. This case has a test that determines whether a specific Internet disclosure was 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 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 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.
In many instances of leaks, the information is published on specific technology websites. Many of these 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.
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 six months of such a disclosure.
Secondly, there also 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 the event of a leak, it is important to identify when it occurred and to mitigate the damage. 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.
Once a leak has occurred, steps can be taken to mitigate the damage. 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.
For more information, please contact Jonathan Jackson, Partner, on 020 7269 8550. Email firstname.lastname@example.org
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