In a decision significant in terms of both EPO oppositions and litigation in national courts across Europe, the European Patent Office Technical Board of Appeal (TBA) has ruled that contents of an email do not automatically become publicly available and form part of the prior art as a result of the transmission of the relevant email. This is the case regardless of whether the email was encrypted or not, or whether or not the emails were publicly available because they could have been lawfully intercepted by an internet service provider or by law enforcement personnel.
The mere hypothetical possibility of having access to a document on the internet did not automatically make it become available to the public within the meaning of Article 54(2) EPC. A further step was required in that there had to be a practical possibility of having “direct and unambiguous access
Essentially, if information can be publicly accessed by ordinary online means it will be considered to be part of the state of the art. If it can’t be publicly accessed by ordinary online means, for it to be prior art it must be demonstrated that the information has been accessed and disclosed to the public at least once.
Background
Under the European Patent Convention an invention must “not form part of the state of the art” if it is to be considered new, and therefore be patentable. Article 54(2) EPC provides that the state of the art comprises “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 this case, the result of the opposition turned on whether certain emails transmitted before the filing date should be treated as prior art. If they were, then it was accepted by the parties that the opposition would succeed given that these disclosures contained novelty-destroying material. There were two emails in question, one of which had been encrypted and one of which had not.
Under EPO case law information is “available to the public” if only a single member of the public is in a position to gain access to it and understand it, and if the disclosure to that member of the public is not under an obligation to maintain any secrecy – whether the information has in fact been accessed is irrelevant.
The TBA differentiated content on a web page on the internet from content that is transmitted by email. Web content can be read via its URL, which can be found by members of the public with a public search engine if the particular content has been keyword indexed whereas an email is a private communication from a sender to one or more recipients. Emails are not placed in an open and unrestricted area of the internet, cannot be located by using public search engines, and can only be read by a member of the public (who is not a recipient of the email) if extraordinary measures are used, such as deliberately intercepting or hacking a computer network.
The decision
In making its decision, the TBA upheld a previously applied test which was whether before the relevant date a document stored on the internet and accessible via a specific URL –
“(i) could be found using a public web search engine by using one or more keywords all related to the essence of the content of that document, and
(ii) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document.”
The mere hypothetical possibility of having access to a document on the internet did not automatically make it become available to the public within the meaning of Article 54(2) EPC. A further step was required in that there had to be a practical possibility of having “direct and unambiguous access”.
Specifically, the TBA held that the legal test of access by “a member of the public, i.e. someone under no obligation to keep the content of the document secret” would not be met by an email transmission via the internet.
The effect of potential interception of an email
The opponent’s main argument was that, as a matter of fact, email interception routinely takes place in the US and that emails can be fully keyword searched in the US. It therefore argued that US emails – including those transmitted via US servers (including .com addresses) irrespective of the country of origin – were to be treated as being public as they were open to lawful interception by an internet service provider or by law enforcement personnel. This factual matrix is unique to the US as intercepting emails sent or routed via European countries is illegal as a matter of EU law.
The TBA ruled on both the position in the EU and in the US. As regards emails in the EU, it held that it was clear that any potential interception of an email in the EU would be unlawful as a matter of EU law. The result was therefore that the test established in T 1553/06 would not be satisfied in the case of emails sent via the internet in the EU. There would be no access by a member of the public who was not under an obligation to keep the content of the email secret.
In terms of the US, the TBA was not satisfied that as a matter of fact email interception was occurring in the US and was lawful in a way which made the contents fully public in the sense required by the test established by T 1553/06. Even if this were the case, the TBA would not accept that an intercepted email could be used in a novelty-destroying way in patent proceedings in Europe. This would be contrary to EU law, which expressly provided that private communications over public telecommunications networks were confidential and were not to be intercepted. It would also be contrary to the fundamental right to the protection of private life and correspondence enshrined in Article 8 of the European Convention of Human Rights.
Even on the assumption that US ISPs and law enforcement agencies were lawfully entitled to intercept emails transmitted over their networks in the US, an email passing through the US does not become publicly available for that reason alone. It is still necessary to prove a specific instance of disclosure of that email and the potential for disclosure in the US alone was not sufficient. The emails were not therefore considered to be prior art.