Decision "Drahtloses Kommunikationsnetz"
(Wireless communication network) of
the German Federal Supreme Court (BGH X ZR 14/17) - Public availability of internet publications
This decision concerns the public availability of prior art for a European Patent designating Germany, which was filed as a PCT application on 7 October 2008 under US priority of 8 January 2008.
The nullity claimant provided a document NK6 as prior art. The document was uploaded on 8 January 2008 at about 8.36h Central European Time on a webserver of a 3GPP standardization group and was then available worldwide. The inventor then uploaded an e-mail addressed to the working group, wherein he referred to this document.
The upload time corresponds to 22.36h in Alaska or 21.36h in Hawaii of the previous day (i.e. 7 January 2008).
According to Article 54 European Patent Convention (EPC) :
(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
In case of a validly claimed priority this applies to the priority date according to Article 89 EPC.
II. Decision of the Federal Supreme Court
The court first explains that the date when the patent application or priority application was filed with the respective office is the basis for determining whether a document is part of the prior art or not. It does not depend on the exact hour or minute of the filing.
Then, the filing date or priority date is to be put into relation with when the cited reference was made publicly available.
In view of the above situation, the Federal Supreme Court distinguished three different approaches :
- The time zone, where the patent application or the priority application (in this case) was filed is decisive. This approach was for example used in the UK by the High Court (EWHC 3366 [pat]) in 2015 and the Court of Appeal (EWCA Civ 266) in 2017 as well as in a decision of an Opposition Division of the European Patent Office (EPO).
- Another approach is to use as publication date the date in the time zone in which the act was carried out which leads to the publication of the document.
- A further approach (also brought forward by the nullity claimant) and also used by an Examining Division of the EPO, considered that it is only necessary that the document is available to the public in any time zone before the filing or priority date.
In case approach c) were retained, document NK6 would be available to the public prior to the priority date of the patent application, whereas for approach a) (when using seat of the USPTO, which is in Alexandria (Virginia)) or b) the document NK6 would not be considered as prior art.
The Federal patent court considered that approach a) has the advantage that it excludes that a document will be prior art which was not made publicly available before the date in the time zone of the patent office. However, this approach has the drawback that it is necessary to determine the exact time of publication of a document. This is in particular difficult, when the document only mentions the date of publication and not the time.
The second approach b) has the advantage that only the date on which the document was made available is considered. Further, it comes closer to the concept of the provisions of the Paris convention, in which only the date (and not the exact time) or time zone of the filing is relevant. For example, for publications of the patent applications only the date is usually considered. The Federal Patent Court also refers to Articles 54 (3) and 87 EPC, which also refer only to the date and not the time.
The approach c) was dismissed by the court, because it enlarged the reference of the time zone, in which the act of publishing was carried out to all time zones without a justifiable reason. Further, it has the disadvantage that the exact time of the publication of the document has to be determined.
The Federal Supreme Court concludes that the approach c) is not applicable.
The present decision has only excluded the broadest possible approach. Thus, the court has not finally decided, which one of the other approaches is preferred and would therefore be applied in a future decision. Thus, there still remains certain uncertainty.
This is only a very short overview about the decision and should not be considered as legal advice.