30/04/2015
With the rise of the internet, a disclosure made in one country might be immediately available around the world. This can include countries that have a different calendar date at the instance of disclosure due to their different time zones. We need to know precisely when the disclosure was made in order to assess novelty and inventive step. An online disclosure is potentially simultaneously first made available in different countries on different days. This could cause problems if it is close to a patent application’s filing or priority date. This is not merely a theoretical concern: we have a few recent patent cases that illustrate the problem.
A Practical Example In Europe
The main patent statutes in Europe do not make any explicit provision for time zones. However, the EPO’s Guidelines for Examination discusses how to assess the publication date of an internet publication and recites that “if a publication date is close to the relevant priority date, the time zone of publication may be crucial to interpret a publication date”; see G-IV, 7.5.6. While the Guidelines for Examination have no legal effect, they helpfully indicate how the EPO is likely to act in this situation.
In a recent decision of the EPO’s Opposition Division, a situation arose in which the time zone of publication did indeed become crucial to interpret a publication date.
EP application no.03012734.4 claims priority from US patent application no. 10/248,731 filed 13 February 2003 in the US. The question to be considered was whether an internet disclosure formed part of the state of the art for the assessment of novelty and inventive step, when the disclosure was sent to a France-based server at 2am CET (i.e. GMT+1) on 13 February 2003 and made available almost immediately.
It is established case law that the priority date is a priority day of 24 hours and so the actual time of filing of the priority application is not important. However, it appears that the place of filing could still be important.
The EPO’s Opposition Division decided that the priority date is the date of 13 February 2003 in the US, which began at 0.00 EST (i.e. GMT +5). The disclosure in France at 2am CET on 13 February 2003 resulted in documents available all over the world almost immediately, including the US. The disclosure in France at 2am on 13 February 2003 was therefore available in the US at 8pm on 12 February 2003 and so considered to be made available before the priority date.The patent was revoked as a result of this disclosure.
This decision of the Opposition Division is only a first-instance decision and was not appealed. There is therefore no requirement for the EPO to follow this ratio if a similar situation arises again.
It is also arguable that a different result might have arisen if the EP application derived from a PCT application filed at the USPTO with no priority claim on 13 February 2003, given the provisions of Article 11 PCT – “the receiving Office shall accord as the international filing date the date of receipt of the international application” and “any international application … accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State”.
But this decision is still important because it is indicative of what the EPO could do in similar situations in the future.
A Practical Example In China
A similar situation came about in China, where the eventual decision was different from that in Europe. A Chinese patent application claimed priority from a US patent filed 17 August 2004. The State Intellectual Property Office’s Patent Reexamination Board (PRB) rejected the application based on the disclosure of a report dated 17 August 2004 of the contents of a website available in China. The PRB reasoned that, since China and the US are in different time zones, the online report must have been published on 16 August 2004 according to US time, before the priority date.
However, the Chinese courts held on appeal that the report was disclosed on the same day as the priority document was filed, 17 August 2004, and so could not be used as prior art against the patent. Essentially, the approach the Chinese courts took was to ignore the differences in time zones and look at only the dates of the publications.
Who Does This Affect?
In the European example above, the invention related to development work carried out towards a technical standard and the server was hosted in a different location from where the priority application was filed. We can imagine similar situations occurring in academia where inventions may be disclosed at conferences and symposiums around the world at the same time that a patent application is filed at the national office of the inventor’s home institution.
What Can Applicants Do To Avoid This Risk?
There is no international harmony in treatment of time zones and applicants should not assume all other countries will follow the Chinese approach of ignoring time zones for publication dates.
If the publications are from third parties and we do not know about them at filing, then we cannot take any actions at filing to avoid these publications becoming part of the state of the art for assessment of novelty and inventive step.
If the publications are the applicant’s own disclosures then they would normally have control over the timings of their own disclosures and the timings of their patent filings. In this case, it is safest to take into account the locations of their disclosures and the patent filings and not just rely on filing their patent applications on the same calendar day as the disclosures are made.
In an ideal world, applicants would be able to file their patent applications on the day before their inventions are disclosed, avoiding any time-zone publication risk. Alternatively, applicants can ensure that applications are filed before disclosures are made taking into account the time of day of disclosure and filing converted to a common time zone. We appreciate however that in technical fields where the development is particularly fast-paced, these might be overly cautious and perhaps not even achievable.
If you would like to discuss your patent filing strategy with us and any possible publication-date complications due to time zones, or if you are aware of a forthcoming public disclosure of an invention and would like to check whether your planned filing date will be sufficient to avoid any of these complications, please get in touch with us.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
