Koninklijke Philips Electronics N.V. has survived a challenge against its “Display Device” patent by DSM IP Assets B.V. in a ruling by the Boards of Appeal of the European Patent Office (EPO) that tries to clarify the law around public disclosure of a patent and the use of email.

The challenge, an appeal in the form of a test case against an earlier decision by the EPO, was based on DSM’s claim that three documents were available before the filing date of the patent. The three documents, a webpage, an unencrypted email, and an encrypted email all discussing the patent, were notarized as having existed before the February 1 2000 date of filing for the disputed patent. European patent law, specifically Article 54(1) of The European Patent Convention, requires that an invention not be part of “everything made available to the public by means of a written or oral description” at the filing date of its patent application. DSM claimed that the combination of the three documents accurately described the inventive step at the core of the patent claim and, because all three documents were publically available at the time of filing, the patent was not novel.

In a parallel challenge by DSM to the EPO targeting the public availability of web-based documents, the Boards of Appeal found that the possibility of accessing a document through a URL was not sufficient to prove public disclosure and that a “practical possibility of having access”, such as that provided by a public search engine, was required. The judgement of the parallel challenge was repeated in this test case and, because the webpage was indexed by and could be found with the Altavista search engine, the webpage document was held to be publically disclosed.

The decision on whether the emails were publically disclosed was not as simple and required thorough legal analysis. The original judgement found that the use of the two emails did not publicly disclose the patent, and the Board in the instant appeal invited DSM to provide a counter argument. DSM felt that the “balance of probabilities” standard should be applied to all published written materials including paper, internet webpages, and email, and that “an unencrypted e-mail was like a postcard viewable by all, whereas an encrypted e-mail was more like a letter in an envelope.”

DSM proposed that email data can be intercepted either illegally or legally, and once intercepted there would be no obligation to keep the contents secret. Illegal interception could occur through network eavesdropping during transmission or hacking into the sender or receiver. Legal interception could occur through the maintenance activities of an internet service provider. DSM additionally argued that a non-disclosure agreements (NDAs) that covers the communication between the two parties, as was in place in the instant case, does not affect a third party who intercepts the email data and thereby eliminates any requirement to maintain secrecy of the contents. Further, encrypted emails do not provide absolute protection against eavesdropping, and the international nature of internet traffic probably meant that the data traveled into a jurisdiction, such as the US, where at the time (in January of 2000) eavesdropping wouldn’t be illegal. Because actual proof of disclosure would be very hard to prove, especially eleven years after the alleged disclosure, the balance of probabilities should be sufficient to show that the emails were publically disclosed.

The Board of Appeals was not persuaded and relied instead on case law to rule that proof beyond a reasonable doubt was needed. As only one person would have the information if an email was intercepted, the information would only be considered publically disclosed if the person was in a position to access the information while under no obligation to maintain secrecy. The emails in question were under an NDA, and therefore the receiver of these emails was not in a position to further disclose the information to the public in a way that upheld the NDA. In the case that they were intercepted, legally or illegally, the Board felt that the numerous legislative protections covering the transmission, such as Article 8 of the European Convention of Human Rights and Article 5 of Directive 97/66/EC, would prevent a situation where the information could be disclosed without an obligation to maintain secrecy. Further, the business interest of entities who could legally intercept the data, such as ISPs, to maintain confidentiality surrounding their client’s affairs create a situation, albeit confined by the scope of the test case, where the content of the emails could not be disclosed. Because emails are “not placed in the unrestricted area of the Internet”, and cannot be found in the same manner as content on a webpage, the Board felt there was a prima facie argument against public availability of emails.

Ultimately the board found that the challenge against the patent’s inventive nature was not adequate, and the appeal was dismissed. The inventive step within the patent required the combination of all three of the documents (the website, the email, and the encrypted email), and as the court found that the email documents were not publically disclosed, the inventive step of the patent was therefore not disclosed, and the patent was still novel.

Mark Bowman is a JD candidate at Osgoode Hall Law School.