On 27 July 2011, Mr. Justice Arnold of the Patents Court Division of the High Court of England and Wales, by refusing to grant a summary judgment to the plaintiffs in (“LG Electronics”) opened the door to what might be a novel interpretation of the ideas of disclosure and prior art in British patent law.

LG Electronics involved a dispute between the two parties regarding the infringement of three patents concerning Blu-Ray technology. The plaintiff, LG Electronics, was primarily interested in obtaining a summary judgment in relation to the matter. The defendants, Sony Europe Inc., contested that all three of the patents that LG was claiming in this case were invalid on the grounds of disclosure constituting prior art. To prove this, Sony cited a document— (“DVD Specification”) outlining the specifics of the Blu-Ray technology that LG was seeking protection for, and pointed out that the document was in possession of the (DVD FLLC) since 1997.

The DVD FLLC is a company based in Tokyo, Japan that focuses on the production, maintenance, verification and policing of DVD logos, and Sony’s defense was based on the fact that LG’s release of DVD Specification to the DVD FLLC fell within the realm of prior art. LG’s defense however, turned on the consideration that the document was released to the DVD FLLC under specific terms of confidentiality. Interested parties were then required to pay a fee to DVD FLLC, as well as sign an agreement of non-disclosure to gain access to the document, the information from which was restricted for use in the field of Blu-Ray DVD development as outlined in the document. In refusing to give a summary judgment, Justice Arnold considered that while LG’s efforts at protection of its invention, i.e. the imposition of confidentiality terms on disclosure, probably did not constitute prior art, Sony’s counterclaims that the document could have been made available to all interested persons might also have been valid, and a full trial was needed to determine an accurate outcome of the case.

Section 2(2) of the UK outlines the criteria for prior art that could invalidate a patent, namely any information provided to the public before a patent’s priority date, and also states that this knowledge can be through “written or oral description, by use on in any other way.” LG’s assertion then, that the confidentiality aspect it imposed on the disclosure of DVD Specification was sufficient to preserve the novelty of the invention implies a ‘disclosure in degrees’ approach. Both the and the UK’s have disclosure strategies and policies intended to preserve the balance between and the invention’s novelty. However, LG Electronics speaks to the possible willingness of the British courts to consider the desire and ability of inventors to place their own terms on a disclosure agreement. In the UK at least, it appears that the scales tip alternately towards either side on a case-by-case basis. While it was hoped that LG Electronics could have provided a definitive direction, , leaving the British courts in the same quandary as before.

In Canada, sections 28(2) and 28(3) of the deal with the provisions of prior art and disclosure, similar to the British ones mentioned above. Jeremy de Beer’s outlines the inconsistencies in disclosure obligation policy in Canada, especially noting the Supreme Court’s hesitation to get involved, leaving inventors to their own means to balance their interests with those of the public, while staying within the . It seems as though Canada is sorely in need of a LG Electronics-like litigation opportunity to force the courts to finally take a stand on the subject.

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, the free online encyclopedia that is open for editing to the general public, with its 14 million articles in over 260 languages, continues to be a life-saver for students around the world. It seems like not so long ago when the dominant mentality was that online content should never be cited in scholarly work, and Wikipedia would have been a prime example of the type of source that should be avoided. Though many still adhere to this type of a standard, that the “number of U.S. patents issued last year that contain one or more references to Wikipedia articles totalled 809, a 59 percent jump from 2008”. Though this is still a fairly small percentage of the 17000 issued patents that contain URLs, and an even smaller percentage of the , it is nonetheless an interesting trend.

The implication of Wikipedia citations in patents is that ordinary individuals, who may not have any specialized knowledge about the topic they are contributing to, can influence whether or not a patent is issued, and perhaps even any infringement claims brought up down the road. I would imagine that most patents containing references to Wikipedia would most likely do so for the purpose of explaining prior art. Though a person skilled in the art would still be the standard used to determine questions of novelty, obviousness, etc., the way prior art is described and explained in a Wikipedia article can still potentially affect a decision-maker’s understanding of the matter.

It can be argued that use of material from Wikipedia cannot be trusted for its correctness since virtually anyone is able to edit an article. Whereas, if one were to instead cite a peer-reviewed journal or other published source, it would be understood that the author(s) of an article there would have met some standards of rigour when submitting a work. However, one major advantage Wikipedia could have over a single source, is that a Wikipedia article may be more reflective of collective knowledge about a topic, since many of its articles have been edited by multiple parties. This collective knowledge may be preferred over a singular expert’s knowledge, especially since other ‘experts’ may have different opinions. Additionally, just because something has been given the blessing of a major publisher, it should not mean that a reader ought not be critical of the work. Such an outlook, whether considering an article from Wikipedia or one from an IEEE journal, is always healthy.

Of course, Wikipedia articles may have other potential issues that could hamper the integrity of the patent issuance process. For example, the anonymity of the edits and posts made to a Wikipedia article allow for few, if any, consequences for the authors for being wrong, which may make these online articles less reliable. Without knowledge of such basic information about the author, Wikipedia articles appear less credible. Additionally, just as with any other website, pages are constantly updated so that information that may have been on there when a patent is drafted may not be there by the time an examiner reads it. The time at which prior art is made available to the public is important, and determining when online information was actually available can be difficult, as explained . However, despite the constant changes made to articles on its site, Wikipedia keeps track of past versions, each with its own permanent link.

To me it seems that an increase in Wikipedia citations in patents should be nothing to worry about, especially with respect to prior art, where a variety of non-scientific texts seem to be cited. I would think that this trend is simply an effect of the larger movement being culturally driven by Web 2.0 influences. As long as examiners are able to thoroughly review an application before issuing a patent, it should be left to their judgment as to whether specific references offer adequate explanations.

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A recent decision regarding a UK by Ranger Services Ltd raised an interesting issue regarding the accessibility of online documents for prior art searches. As was first discussed on the, the specific question for discussion is the appropriate standard of proof to be used in determining the date on which internet-hosted prior art is deemed available to the public.

This case is closely related to my discussing the accessibility standard of prior art searches in light of the decision. The future of Lister seems destined to come down to a determination of the date that a manuscript was posted on two online databases. As such, it will be relevant to the interested parties to determine whether the standard of proof for determining the date of posting is a basic balance of probabilities or the elevated standard of beyond a reasonable doubt.

As acknowledged by the EPO, online information for prior art searches. First of all, websites are often updated without any record of their previous content. Second, websites do not always make available the date that content was published. Third, many sites may be password protected or may require payment for access. Lastly, information on web pages can easily be manipulated to deceive viewers. Despite these difficulties, virtually all forms of internet material including password protected sites, blogs or even email archives are valid sources of prior art.

While it may seem obvious that the civil standard would apply, the applicant contended that the traditional EPO practice is to inquire on the reasonable doubt standard. In actual fact, the is somewhat of a hybrid, requiring more than "mere probability" but not reaching the standard of reasonable doubt. Regardless, the Hearing Officer determined that the standard to be applied in the UK was the customary balance of probabilities test. It was noted that the binding authority is UK precedent, not the EPO position.

To the extent of my research, this issue has not been commented on in the Canadian context. However, the 2003 Patent Board decision of Industrial Design Application No. 1998-2666, Re 25 C.P.R. (4th) 373 does provide guidance on the use of the internet as a tool for prior art searches. In particular, it is stated that examiners "must be able to determine the date when the design was published on the Internet" in order to classify the information as prior art. However, it is acknowledged that despite the "transient nature" of the internet, examiners will use the date stated on the website as that of the most recent modification.

The practice mandating that the date "must" be ascertained but allowing examiners to simply take the date posted at face value seems open to attack. The situation is foreseeable where��an interested party changes the date on their website to falsely represent their publication so as to preclude a competitor's product from patentability. Likely the most fair interpretation of this passage would be that prima facie an examiner must show beyond a reasonable doubt at least the posted date of the prior art, with this evidence open to a rebuttal on a balance of probabilities from the applicant that proves otherwise.

A final issue deals with material that at one point existed online as prior art but was subsequently modified. Generally, internal archives are not maintained that contain a site's history. However, some third party websites such as , claim to do so. This site was in its infancy in 2003, and while it was considered in Industrial Design, no concrete ruling was made on its applicability. Archive.org was considered more extensively in a and rejected as being unreliable. Factors considered were numerous, notably that archive.org was funded by the for profit , that archived material may lose its functionality, that the format of the archived site may be different to the original, that "images" of a site represented a series of snapshots rather than a continuous history and that there are proprietary issues of the information received. Given this abundance of issues,��material archived by a third party without any proof of veracity is unlikely to be accepted.

The use of online material as prior art raises many interesting issues. The UK decision in Ranger Services likely was correct in applying the civil standard of proof, but the status of the law is still uncertain in Canada. However, this issue may not remain stagnant for long as it is certainly possible��that cases will soon come forward specifically addressing this issue.

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More specifically, the suggestion has been that has potential to become useful for prior art searching undertaken during preparation of a patent application.�� During that process, patent agents must scrutinize publicly available documents in order to ascertain what information is already in the public domain.�� Any publicly available information may narrow the scope of proposed claims in a patent, since a patentee cannot validly claim what is already described in a publicly available document.�� Nor can a patentee claim subject-matter which would be obvious based on publicly available documents.

Although patent examiners and agents do turn to textbooks in preparing and examining patent applications, this can be rare, since textbooks are sometimes seen as being .�� This is because textbooks are typically prepared with general information for use as teaching tools, and are not typically the first choice for publishing cutting-edge advances that are relevant to patent applications.�� On the other hand, periodicals, due to their characteristic frequent publication, are often the first to share novel technological and scientific advances with the public.

Of course, sometimes general information is exactly what is needed for a patent examiner seeking to understand a basic concept or principle in a specific field.�� This concept was addressed by the Canadian Intellectual Property Office (CIPO) in a canvassing the patent law standard on obviousness.�� According to that report, although the test of obviousness was being applied consistently by patent examiners between different fields of technology, the benchmark at which obviousness was being judged .�� One possibility suggested for this observation related to��the benchmark for obviousness which incorporates the “common general knowledge” of the ordinary workman in the relevant scientific field.�� In areas of newer technology, the proposition was that patent examiners had more difficulty determining the content of the common general knowledge and effectively lowered the expected general knowledge for that field.

That report suggested that the lowering of the benchmark was exactly what was happening in the field of biotechnology.�� The study found that very few objections on obviousness were raised by Canadian biotechnology examiners, who felt that the limited knowledge in the field indicated less predictability such that more inventions were being seen to meet the requirement of being non-obvious.�� Correspondingly, examiners were hesitant to allow patent claims to cover subject matter which went beyond the examples cited in an application.

Although that study was published in 1996, the bottom-line has application today.�� If Google Books, or any other service, for that matter, makes good on an attempt to digitize textbooks relevant to an evolving field of technology, it could be that their service will disseminate exactly the type of general, basic information that is required for patent examiners and agents to properly and efficiently evaluate the common general knowledge in that field.

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