Burden of proof for internet prior art against
patent applications
The European Patent Office (EPO) recently issued guidelines clarifying how prior publications found on the internet - so called “internet citations” - can be used. There has also been a recent case involving a patent application of Ranger Services Limited at the UK Intellectual Property Office (UK IPO) where the use of internet citations was considered. This matter is increasingly relevant to patent examination as more prior art documents are only found, or are at least published first, on the internet.
The key issue with an internet citation is to establish the date of publication. The EPO
guidelines clarify that an internet citation cannot be used where the date of publication
cannot be determined. An applicant may therefore evade an internet citation by arguing
that the date of the citation cannot be proved. However, in the event that the text of the
citation states a publication date this will be taken on face value unless evidence is
provided that challenges this.
Of course, many internet citations do not include a stated publication date. The burden
of proof then lies with the person raising the document (the patent office examiner or
the opponent) to establish a date of publication, possibly using an internet archiving
website such as www.archive.org. Although the validity of the dates provided by such
websites has been queried, the EPO guidance permits their use. The approach taken is that whilst such websites might not contain all published documents, and therefore are not a comprehensive source of information, if they do give a date for a relevant
document then that date can be used; it is then for the owner of the patent application to prove the date is invalid.
With regard to the level of proof required for the date of publication of an internet
citation, in the UK case the patent applicant contended that the burden of proof of“beyond reasonable doubt” should be used, as in criminal cases. However, both the EPO
and UK IPO have confirmed that the lower, civil, standard of “on the balance of
probabilities” is sufficient.
Accordingly, to successfully argue against an internet citation as being in the public
domain it will be necessary to show evidence as to why the particular publication date
relied on is incorrect. Broad arguments based on the unreliability of publication dates on
the internet will not usually be accepted.
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