Out-Law / Your Daily Need-To-Know

Prior disclosures do not undermine patent filings made on the same day, rules High Court

Out-Law News | 01 Dec 2015 | 4:33 pm | 3 min. read

Disclosure of information relevant to an invention does not mean the invention cannot be patented as long as the patent application is filed later the same day, the High Court has ruled.

Mr Justice Birss said that a patent filed for more than 14 hours after "an enabling disclosure of the invention" had been made over the internet did not undermine the novelty, and therefore validity, of that patent.

The judge considered the novelty of a standard-essential patent relevant to 4G technology in a dispute between Unwired Planet and technology giants Huawei, Samsung and Google. Unwired Planet had acquired the patent at issue from Ericsson.

Ericsson filed for a patent for its invention in the field of wireless communication before the US Patent Office at 21:59 GMT on 8 January 2008. But earlier that day, at 07:36 GMT on 8 January 2008, Ericsson had shared information relevant to the invention with others who were involved in the development of the 4G standard for which the patented invention has subsequently been deemed essential. The document was accessible online and had been downloaded by a Samsung employee at 08:45 GMT on 8 January 2008.

Under patent law, the disclosure of research or other details of an invention prior to a patent application being filed is considered to count against the award of a patent for that invention. This is because patents can only be awarded where an invention is new. Public disclosures of inventions prior to a patent filing being made ordinarily count as 'prior art' and preclude the registration of the patent applied for.

According to the Patents Act in the UK: "The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."

Mr Justice Birss said that the Act, and corresponding provisions in the European Patent Convention (EPC), refer to the date of disclosures being relevant to consideration of prior art rather than the specific time they were disclosed. He said that the fact that Ericsson had filed for patent protection before the US Patent Office after disclosing details of the invention online did not mean that prior art existed for the invention since the patent application had been filed on the same day.

"The international system ensures that the date on which a priority document was filed and the office in which it was filed are always known facts," Mr Justice Birss said. "They are all one needs to know in order to establish the priority date but both facts are needed."

"Nothing in any of these materials requires knowledge of the time at which a priority document was filed. If the law required one to know what date or time it was elsewhere in the world when a priority document was filed, one would need to know the time of filing as well as the date. But the system is not set up that way in general and the EPC and 1977 Act do not require it," he said.

The judge said that a "given date" does not have "absolute meaning" because "the time and date around the world are different" at any given moment. Therefore consideration of date has to be made with reference to the time by which the patent office before which a patent is filed is operating by, he said.

"In order to decide if an event took place before it, the priority date has to be based on some frame of reference," Mr Justice Birss said. "The only frame of reference which makes sense is the one at the patent office at which the priority document was filed. Using any other approach would mean that an event which happened after the priority document was filed could count as prior art. That would be a very odd result."

Mr Justice Birss said that the correct time zone in which to consider the date of the patent filing and earlier disclosures by Ericsson was Eastern Standard Time (EST) as this is the time zone in which the US Patent Office operates.

Ericsson had made details of its invention available for others to see at 02:36 EST on 8 January 2008 and the patent filing before the US Patent Office had taken place at 16:59 EST on the same day.

The judge said that therefore, in terms of patent law, the disclosures had "not [been] made available to the public before the priority date". He said it was "irrelevant" that "in some places in the world such as Hawaii" the date on which the disclosures were made was 7 January. He also confirmed that a document containing disclosures relevant to inventions does not need to be "actually seen or read" to count as a disclosure. Such documents on need to be "available", Mr Justice Birss said.

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