16.05.2024

The stage of art, an essential concept for patenting inventions

Among the substantive conditions laid down by the law (both the Romanian law, Law 84/1991, and the European Patent Convention) for patenting an invention, two of them have a common element: the reference to the "state of the art". Thus, the "novelty " condition means that an invention "must not be comprised in the state of the art at the filing date of the application" in order to be patentable. The "inventive step " condition is met when, to a person skilled in the art, the invention "does not obviously result from the knowledge contained in the prior art."

What, then, is the state of the art, which is so important for patenting an invention? Law No 64/1991 on patents, in line with the European Patent Convention, states that "the state of the art comprises all the knowledge which has become accessible to the public by written or oral description, by use or in any other way up to the date of filing of the application for a patent for invention". Of course, this means all knowledge which has become accessible to the public at the global level, and not only at the level of the State in which the patent is sought. At the same time, the language through which the knowledge making up the prior art is expressed is irrelevant in relation to the language in which the patent application is filed.

The Regulation implementing Law No. 64/1991 ("theRegulation"), in accordance with the Guidelines and practice of the European Patent Office ("the EPO"), provides a number of additional elements regarding the content of the concept of prior art. Thus, 'publicly accessible knowledge means information which is accessible to the public, anywhere in the world, by means of: a) the presentation of patent documents or other information in various media or through various information channels; b) the oral description of information which has not been subject to any confidentiality restrictions on the use or dissemination of that information'. It follows from the above that the knowledge which makes up the state of the art is essentially public, transparent and accessible. The date on which the knowledge became accessible to the public must be identifiable, and it is sufficient to indicate only the month of a given year or only the year, in which case the information is deemed to have become accessible to the public on the last day of that month or year.

The definitions given above cover the two key elements that the knowledge included at the technical stage presents, namely: a) it is publicly accessible ; b) it is accessible through a communication channel.

'Accessible' to the public is not the same as 'accessed ' by the public. Thus, it is sufficient if the document in question was only available to the public, regardless of whether or not any member of the public knew that it was available or whether or not any person asked to see it, as the EPO Board of Appeal held in Case T0381/87.

What does "public" mean for the state of the art? In terms of the number of persons, the audience may consist of a single person, and there is no minimum number enshrined in law or relevant practice. As regards the level of qualification of the audience, the Regulation provides that the audience may consist of any person, irrespective of the level of training, and not necessarily of a specialized person. However, as the EPO's practice has, in several decisions, analyzed the content of the notion of "the public", we will see that the level of knowledge may be relevant depending on the means of communication through which the knowledge reaches the public.

Thus, the EPO's Board of Appeal held in case T 834/09 that, in the case of a written disclosure, it is irrelevant whether or not the person who makes up the audience is qualified in the field, because the content of a written disclosure can be freely reproduced and distributed even without being understood. In contrast, in T 0877/90 it was held that if the oral disclosure had taken place in front of a circle of persons, unable to understand the technical teaching, it could be held that in such a situation the disclosure was not made available to the public.

There is, however, a specific requirement for a "public" to exist, namely that the person or persons in question must not be subject to any confidentiality restrictions so that they can disseminate the information themselves. If, on the other hand, the person who has been exposed to the knowledge is bound by an obligation of confidentiality, it is presumed that he or she cannot further disseminate the knowledge, so that there can be no public and therefore no information covered by the prior art.

In the EPO's practice (Case T 830/90), it has been established that the obligation of confidentiality may be both explicit, laid down in the form of a contractual clause, and implicit, where its existence results from the circumstances in which the information was disclosed. In other words, in order to establish whether there is a tacit agreement of confidentiality, account must be taken of the particular circumstances of the case, in particular whether one or more of the parties involved in the communication had a recognized objective interest in secrecy. Thus, if, at the time of receiving the information, the addressee is in a special relationship with the sender of the information, then he cannot be treated as a member of the public and the information cannot be regarded as published, as held in Case T 1081/01. In the same case, it was held that in the case of information communicated under a contractual obligation of confidentiality, the termination of that obligation does not in itself automatically give rise to a 'public' character. On the contrary, in such situations, a separate act of communication of the information is necessary in order for it to enter the state of the art.

If only one of the parties to a communication of information had an interest in secrecy, it must be established whether the other parties implicitly agreed to act accordingly. Thus, in establishing a tacit agreement important aspects to be taken into account are, inter alia, the commercial relationship between the parties and the precise subject matter of the prior use. For instance, this is the case where the other parties can be expected to maintain secrecy in accordance with standard commercial practice in the relevant industry. In practice, the following examples of indicators of a tacit confidentiality agreement have been considered: a parent-subsidiary relationship, a relationship of good faith and trust, a joint venture, delivery of samples for testing. In the case of a use on property that is not open to the public, e.g. in a factory, this is not considered to be a publicly available use, as factory employees are usually obliged to keep the information they acquire in the course of their work secret. In another example, the Board of Appeal of the EPO held in case T 541/92 that there was an implied obligation of confidentiality where a subcontractor had given his client sketches of a device. In the Board of Appeal's view, this constituted an obligation of secrecy, it being standard practice for the parties to a contracting relationship to keep their designs secret.

Interesting issues of public accessibility have arisen in practice in relation to documents in the custody of libraries. Thus, in case T 314/99, the EPO's Board of Appeal held that, although a diploma thesis had found its way into the library's archive, it did not become public merely by being physically placed in the archive, since this did not mean that the thesis had at that time been cataloged, indexed or otherwise prepared for the public to acquire knowledge of it, and since without such means of information the public could not be aware of its existence. On the other hand, in Case T 0834/09, it was held that the person responsible for receiving and date-stamping a document received at a public library is undoubtedly a member of the public because that member of staff is in no way bound by any obligation of secrecy as regards the publications which he manages and their contents and, after all, his very function as a member of staff of a public library means that he must make the information available to the public.

With regard to the ways in which information is communicated, we pointed out earlier that, in order to be included in the state of the art, knowledge may have become accessible to the public by any means. However, the law specifically mentions a number of ways: written description, oral description, use. If we have already referred to written description, oral description may consist of a presentation at a conference, in broadcasts or audio recordings.

At the same time, knowledge becomes accessible to the public by use if, at the relevant time, any person could have had access to it by exposure or use. In this respect, the Regulation provides that if a person sells an object to a third party without any restrictions, limitations or obligations as to confidentiality, then the object is deemed to have been made accessible to the public. Even if in such cases, the specific characteristics of the object cannot be established from an external examination, but only by a subsequent analysis, these characteristics must nevertheless be considered to have been made available to the public, precisely because the purchaser has acquired the possibility of an endless analysis of the object. For example, the registration of a motor vehicle proves that it has become accessible to the public, and the same conclusion is also true of its component parts, as held in Case T 1510/2008.

However, there is an important limitation as regards knowledge by use , namely that it is limited to the specific intrinsic characteristics of the object. By contrast, extrinsic characteristics, which only manifest themselves when the object is subjected to an interaction with external elements specifically chosen to provide a certain effect or to reveal potential outcomes, depend on deliberate choices and cannot be considered to be disclosed in this way. Thus, in case T 1833/2017, the EPO Board of Appeal held that a product (a chemical compound in this case), although placed on the market, cannot be considered to be publicly available as long as the person skilled in the art had no means of determining the composition or internal structure of the product.

On the contrary, in case G1/92, the Grand Board of Appeal of the EPO held that the chemical structure of a product is part of the state of the art when the product as such is available to the public and can be analyzed and reproduced by the person skilled in the art, regardless of whether or not special reasons for analyzing the composition can be identified.

The above are just a few samples of the reasoning on the basis of which practice has determined whether certain knowledge expounded through certain modes of communication has become accessible to the public. The importance of this examination is a consequence of the fact that the state of the art is an essential legal concept on the basis of which it is established whether or not the conditions of novelty and inventive step are met, so that its correct delimitation plays an essential role in any procedure for registration or appeal (revocation, annulment) of a patent.

An article signed by Mihai Stănescu, Managing Associate - mstanescu@stoica-asociatii.ro - STOICA & ASOCIAȚII