Key points
- This concerns the refusal of a patent application with priority date in July 2004 where the relevant citation is "D2: W.E. Ryan: "An Introduction to LDPC Codes", XP002336953, pp. 1-23, the date "August 19, 2003" indicated on the first page."
- Google search for "W.E. Ryan An Introduction to LDPC Codes" gives as of today as the first result a pdf file hosted at https://ift.tt/nGkxRoM which appears to be in content the same as a book chapter published in November 2004 (ISBN 9780849315244); it may also have been a conference paper.
- Entry into the EP phase in 2007, supplementary ESR in 2010, Communication in 2015, summons for oral proceedings in 2018 and only then was this document D2 introduced into the proceedings by the Examining Division.
- The Board:" it appears that the examining division retrieved D2 as an Internet citation but did not record any information as to when this citation was made publicly available. The examining division considered the "nominal" date of "August 19, 2003", indicated on the first page of D2 (cf. point I above), to be indeed this document's publication date. When questioned by the applicant, the examining division conducted a search for D2 by means of the Google search engine (cf. Reasons A1.4 of the appealed decision). Moreover, as reflected in the minutes of the oral proceedings before the examining division, they maintained their position even after having revisited the issue of D2's publication date. This even seems to have been the major point of debate during the oral proceedings"
- "The board of course acknowledges that due to an advance in technological means of search and recovery of documents, it may at times be necessary or useful to explore possibilities not mentioned in the Guidelines. Yet the appellant's concern regarding the ability of a commercial tool such as the Google search engine used by the examining division to provide a reliable proof of a publication date is legitimate, given the lack of verifiability of the tool's functioning and its associated collection of search results. Google's PageRank algorithm (or any of the other algorithms used by this search engine) could very well have stacked the search results such that results relating to a publication date in 2003 would have been ranked higher than those with a later publication date, e.g. because the former results happened to correspond to websites that have a better search engine optimisation. In this case, the examining division could have missed the latter results, thereby ruling out references that may have potentially cast doubt on what the examining division believed to be D2's actual publication date."
- "It follows from points 3.3 to 3.6 above that the evidence provided in the decision under appeal to support the examining division's assessment of D2's publication date is inadequate, which led the board to conduct its own investigations to assess whether or not D2 could be taken into account as a prior-art document. These investigations could only confirm the appellant's doubts regarding D2's publication date based on their annexes E and F (cf. point II above), where D2 was referred to with a publication date in the year "2004" and "2005", respectively.'
- The Board: Should the examining division upon remittal further wish to rely on document D2, it should provide an annex with appropriate print-outs or screenshots of the further "information on the then publishing web site" (cf. point A1.1 of the reasons of the decision under appeal). Alternatively, the division may inquire with the executive committee of the ICC 2003 conference, for instance with the "Tutorial Co-Chairs" as indicated in the section "Committees" of the conference's web page (cf. aspect (ii) of point 3.5 above), to determine whether any material reflecting the content of Mr Ryan's presentation at this conference is still available. If this is the case and if the assembled material presents a sufficient degree of similarity with D2, this could be an objectively verifiable basis for confirming the public availability of D2."
EPO T 0013/20
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/03/t-001320-proofing-internet-publication.html
