The Technical Board of Appeal of the European Patent Office ("EPO") has ruled that the content of an e-mail transmitted via the internet could not form part of the  "prior art" under the European Patent Convention ("EPC").

The EPC states that in order to be considered new, and thus patentable, an invention must "not form part of the state of the art".  The state of the art comprises everything which has been made available to the public by written or oral means, by use, or in any other way.  The state of the art relevant to an application is judged on the date on which it is filed.

The case related to a patent application made by Koninklijke Philips Electronics N.V.  This was opposed by DSM IP Assets B.V., who claimed the subject of the patent lacked an inventive step.  One of the central issues was whether e-mails transmitted prior to the filing of the application could be considered to be prior art, and thus be part of the state of the art.  If this was held to be the case, the opposition would have been likely to succeed.  The opponent also argued that the content of a website should be considered prior art.

There were two e-mails in question, one of which had been encrypted, and one of which had not. Both e-mails were sent by a representative of Akzo Nobel N.V to an agent of DSM, and had been timed, dated, and certified by a notary. 

In the first instance, the Opposition Division of the EPC held that neither e-mail should be considered to be prior art, as they were not available to the public by ordinary means.  Whilst the information contained on the website was considered available prior art (largely because it could be accessed using the domain name or found through a search engine), this did not provide sufficient information about the invention for the opposition to succeed.

This decision was appealed by DSM to the EPO.  The main argument made by DSM was that the e-mails were publicly available as they could have been lawfully intercepted by an Internet Service Provider ("ISP") or by law enforcement personnel.

The EPO ruled that, in order for it to find that the e-mails were publicly available in these circumstances, DSM would have to establish that they had actually been disclosed to the public by either an ISP or law-enforcement personnel on at least one occasion. DSM was unable to do so, and the potential for disclosure was not considered to be sufficient.  This meant the e-mails were not considered to be prior art.

In addition, the fact that a notary had seen the content of the unencrypted e-mail did not mean that it had been made available to the public.

DSM had made three separate claims in relation to the opposition.  As the two e-mails were not considered to be prior art, the EPO ruled that a skilled person would have to make an inventive step in order to arrive at the subject-matter of the claims.  As a result, each of the claims failed.

The judgement highlights that if the public can access information by ordinary online means (such as through a search engine or website), it will be considered to be part of the state of the art.  However, if this is not the case, the party opposing the patent registration must prove that the information has been accessed and disclosed to the public at least once.

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