Out-Law News | 07 Jul 2009 | 11:32 am | 3 min. read
The date and contents of internet disclosures should be assessed on the balance of probabilities, said IPO Deputy Director Ben Micklewright, acting for the Comptroller General of Patents. In the European Patent Office, though, a higher standard of proof is required.
HSBC France wanted to patent a method for authenticating users of a website. The method it described would cover a bank sending a password to a user and the user being asked to select particular characters from that password at login. HSBC applied for the patent in 2005 but claimed a priority date of 2nd July 2004, the date of an earlier French application.
The patent examiner rejected the application, citing evidence of prior art and HSBC appealed that ruling.
Under the Patents Act 1977, a patent can be granted only if the invention "is not obvious to a person skilled in the art, having regard to the state of the art". Prior art comprises all matter made available to the public, whether in the UK or elsewhere, by written or oral description, by use or in any other way, before the priority date of the invention.
The examiner based his objections on two disclosures, one of them a patent filed by Fujitsu Services, the other an article that appeared on the website of Computing magazine with a date of 20th February 2004 – five months earlier than the priority date.
That article described an authentication solution from Lloyds TSB that reduces the risk from keystroke-logging software. It stated: "After a customer logs on to the site and fills in access details, a menu appears asking for a random set of numbers or letters from memorable data. The customer then uses the mouse to click on the characters in the box."
HSBC disputed the date of the article. Computing magazine is published in print and online but the examiner was unable to obtain a paper copy of the relevant issue. Micklewright checked the digital library of internet pages at Archive.org but it was not there. "Two issues therefore arise," he wrote. "Firstly, was this article actually made available to the public on 20 February 2004? Secondly, has it been altered since its initial publication?"
HSBC said that the UK should follow a decision of the European Patent Office's (EPO) Technical Board of Appeal, in the case of Konami Limited. According to Micklewright, that decision "suggests that a higher burden of proof than that applied to more traditional documents should be applied to internet documents."
"In particular they say that in determining whether an internet disclosure was made available to the public the same questions should be answered as with prior use or oral disclosure. At the EPO such issues and the questions of when the internet disclosure was made available to the public, what was made available and under which circumstances it was made available to the public, must be proved 'beyond reasonable doubt' rather than on the 'balance of probabilities'," wrote Micklewright.
That decision also found that some sources are more trustworthy than others. The EPO wrote that "where a web site belonging to a reputable or trusted publisher publishes online electronic versions of paper publications, content and date can be taken at face value and the need for supporting evidence dispensed with.”
However, Micklewright said that the UK takes a different approach to the burden of proof. The Manual of Patent Practice, he noted, states that a case of prior use need not be proved "up to the hilt".
"I do not consider that I am bound to follow the EPO's reasoning in this case," wrote Micklewright. "Rather it seems to me more appropriate, in line with UK cases in this general area … that the date and contents of internet disclosures be assessed on the balance of probabilities, just as it is for cases of alleged prior use or, for that matter, dating any other categories of prior disclosure."
HSBC France accepted that the correct standard of proof is the balance of probabilities but argued that this is not an absolute standard and that the nature of the issue may affect "the kind and the cogency of the evidence necessary to bring the scale down on one side or the other."
Micklewright concluded that it was "highly likely" that the article did appear in a paper version of Computing magazine on or around 20th February 2004 but said that even if that was not the case, its website was "highly reputable".
He added: "In fact, even if I was to follow the reasoning in [the EPO decision], I would have concluded that the date of the internet article had been proved 'up to the hilt' and could be taken at face value without the need for supporting evidence given the trusted and reliable nature of the websites in question and their links with paper publications."
Micklewright also ruled that, based on the prior art available, the application lacked an inventive step. He said that "the claimed invention is obvious in light of the disclosure" of the Computing article. He said that it also lacked an inventive step over the method described in the Fujitsu Services patent.
Micklewright said that in any event the invention is excluded from patentability for being a business method. Its contribution "is not technical in nature," he wrote, refusing the patent application.