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11 December, 2015

The latest decision in an ongoing High Court dispute relating to Standards Essential Patents (SEP) gave careful consideration to the timing of public disclosures and the filing of Patent applications. The way in which the court dealt with the circumstances of the invention being disclosed on the same day that the priority application was filed could have wide reaching consequences for Patent filing strategies in all technology sectors.

In an action before the English Patents Court, Unwired Planet has alleged infringement by Huawei, Samsung and Google (the defendants) of six European (UK) Patents. The Patents are all in the field of telecommunications, five being declared as Standard Essential Patents (SEPs) and one being a non-SEP.
A recent decision handed down by Mr Justice Birss, Unwired Planet International v Huawei Technologies Co., Ltd & Ors [2015] EWHC 3366 (Pat), related to the first of the ‘technical trials’ in this action and considered validity, infringement and essentially issues for the first of the SEPs. Further ‘technical trials’ are scheduled for the remaining Patents. A ‘non-technical trial’ will be held late in 2016 to hear issues relating to Competition Law and SEP licensing on Fair, Reasonable and Non-Discriminatory (FRAND) terms.

The recent decision raised a number of interesting points, including the extent to which secondary evidence may be used in relation to obviousness. However, it is the consideration of time zones for determining what forms the ‘state of the art’ that is of most general interest.

Novelty and the timing of public disclosures and Patent filings
The validity of a Patent may be challenged for lacking novelty over any document that forms part of the ‘state of the art’. The UK Patents Act 1977 requires that:

“the state of the art shall be held to comprise everything made available to the public before the priority date”

Therefore, anything made available on the priority date of a Patent does not form part of the state of the art and so cannot be used to challenge the novelty of a Patent. Only things made available before the priority date can form part of the state of the art.

At first sight this appears to be straightforward. However, the recent decision tackles the consequences of a relatively recent phenomenon in Patent law: instantaneous global publication on the Internet.

The original applicant for the Patent was Ericsson and Unwired Planet acquired the Patent from Ericsson. In preparation for a 3GPP standards committee meeting, on 8 January 2008 (local time in Europe) Ericson uploaded a document (the so-called “Ericsson TDoc”) to the file server of the European Telecommunications Standards Institute (ETSI). As soon as the document was uploaded, it was freely available on the Internet to anyone anywhere in the world. Later on 8 January 2008 (local time in Europe and the US), the priority document for the Patent was filed at the US Patent and Trademark Office (USPTO).

However, a problem arises because at any given moment, the time and date around the world are different. Birss J helpfully summarised the problem with a useful table:

CET (GMT +1) Time zone at location of ETSI file server

GMT Time zone in country (UK) in which the Patent is in force

EST (GMT -5) Time zone of the USPTO

Hawaii (GMT -10)

Ericsson TDoc uploaded to ETSI server 8 Jan 08:36 8 Jan 07:36 8 Jan 02:36 7 Jan 21:36
Priority Doc filed at USPTO 8 Jan 22:59 8 Jan 21:59 8 Jan 16:59 8 Jan 11:59

At the moment the TDoc was made available to the public, the local date in Hawaii was 7 January. Consequently, in Hawaii, the TDoc was available to the public before the priority date of the Patent. The defendants therefore alleged that the TDoc was part of the state of the art and, moreover, that the Patent lacked novelty over the TDoc.

Birss J addressed this issue by determining that to give the priority date proper meaning, it has to be determined based on some frame of reference. In the opinion of the judge, the only sensible frame of reference is the Patent office at which the priority document was filed.

In this case, the frame of reference is the USPTO, whose time zone is EST (GMT -5). The TDoc was made available on 8 January EST, and likewise the priority document was filed on 8 January EST. Therefore, the TDoc was not publically available before the priority and so did not form part of the state of the art.

It is interesting to note that this approach is consistent with a previous decision of the EPO’s Opposition Division concerning Patent application no. 03012734.4. However, in a previous decision of the EPO’s Examining Division concerning Patent application no. 09733661.4, it was suggested that the date of public disclosure of a document should be the calendar day at the location on which the prior art was made available at the respective location (i.e., the location of the server to which the document is uploaded).

Whilst Birss J’s approach ably deals with a number of issues, it also presents some potential problems.

  1. What if the TDoc had been uploaded to the ETSI Server only three hours earlier? In this case, the disclosure would have been made at 23:36, 7 January EST and would therefore have formed part of the state of the art.
  2. What if an applicant makes a disclosure in the far east and then later files a Patent application at the USPTO? For example, an inventor for a US based company might publically disclose information at a globally broadcast conference in Shanghai at 09:00, 2 March CST (GMT +8), which would be 20:00, 1 March EST (GMT -5). The US based company then files a corresponding Patent application at the USPTO at 10:00, 2 March EST, which would be 23:00, 2 March CST. According to Birss J’s approach, the inventor’s disclosure would form part of the state of the art for the Patent application. However, it appears that according to the approach suggested by the EPO’s Examining Division, the inventor’s disclosure would not form part of the state of the art for the Patent application.

This area may yet develop further if it arises in other cases before the UK courts and the EPO. Furthermore, if the recent decision handed down by Birss J is appealed, the Court of Appeal might formulate a different approach. However, for the time being at least, best practise appears to be:

a) where possible, ensure that your priority application is filed at least 24 hours before any public disclosure is made.

b) if a) is not possible (which is often the case), file your priority application on the same day as the public disclosure at a Patent Office in the same time zone as the location of the public disclosure. This should ensure that the date of filing and the date of public disclosure will always be the same.

SEPs and FRAND licensing
The recent decision also found the Patent to be valid and infringed. Furthermore, the Patent was found to be essential to telecommunications standards (the LTE standard 3GPP TS 36.322 release 8 version 8.8.0), so it is an SEP.

The owner of an SEP must be prepared to grant irrevocable licences on Fair, Reasonable and Non-Discriminatory (FRAND) terms. Now that the first Patent has been found to be an infringed SEP, the ‘non-technical trial’ will go ahead (assuming the dispute is not settled beforehand). It is hoped that that trial will help resolve a lot of the uncertainty around SEPs and FRAND licensing and provide guidance for how SEPs and FRAND licensing should be handled in the future.

If you need further information please contact Simon Kahn or your usual Boult Wade Tennant adviser.