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Public availability at confidential technical standards committees

30th Apr 2020

The recent decision T2239/15 (MPEG INPUT DOCUMENTS / Fraunhofer-Dolby) by a Board of Appeal at the European Patent Office (EPO) has provided some important guidance to the patent world on private and confidential input documents submitted as part of the process of developing a new technical standard. Specifically the decision addresses whether these documents form part of the state of the art for assessing a patent’s novelty and inventive step.

Technical standards such as the audio and video coding standards of the Moving Picture Experts Group (MPEG) are developed by experts from many different bodies from around the world. The development process often takes place behind closed doors. Submissions made as part of the process might not be available to the general public and may even be marked ‘confidential’.
Contributors to these standards often make inventions as part of their contributions and apply for patents for these inventions. Under European patent law, a patent’s novelty and inventive step are assessed based on the ‘state of the art’, which includes all documents made available to the public before the patent’s priority date. To check the validity of these patents we need to know whether documents submitted by contributors as part of a standardisation process are publically available.

Earlier case law

Despite the large number of technical standards that have been developed over the years and the large number of patents covering such technical standards, case law in Europe is not settled definitively on this issue.

In the UK, it was considered by the courts in Qualcomm Incorporated v Nokia Corporation [2008] EWHC 329 (Pat) and in LG Electronics Inc v Sony Europe Limited [2011] EWHC 2319 (Pat). But no clear guidance emerged, other than that the burden of proof for showing submissions made to a standards committee were made available to the public fell on the party seeking to rely on the submissions.

At the EPO, the applicant in T1152/12 (LG Electronics) sought to rely on a document submitted to an MPEG standards committee to meet their sufficiency of disclosure requirements. The Board of Appeal had doubts that the document was made available to the public and found that the applicant had failed to meet their burden of proof showing that it was publicly available. The Board refused to let the document be used.

Details of the recent decision

In T2239/15 a patent application was refused at first instance for lack of novelty based on documents submitted to MPEG. The applicant appealed against the refusal, arguing that these documents were not publically available at the priority date. In support, the applicant submitted a large number of MPEG documents giving details of the MPEG organisation and its processes.

The applicant argued that documents submitted to MPEG were only available to a limited number of people who had been provided with passwords to access them online. The applicant further pointed to an MPEG internal document that said “Input documents are all considered private to MPEG and may only be distributed outside of MPEG by the author or permission from the author in separate communication.” The applicant said that ‘private’ in this context had to be understood as ‘confidential’.

But the Board of Appeal was not persuaded.

The Board considered that MPEG documents being deemed ‘private’ is not the same as them being ‘confidential’. The Board justified this by noting that MPEG includes delegations from the national standards setting bodies of multiple countries. These delegations were expected to confer with people outside of the delegations. The Board gave the example of the British Standards Institute (BSI) delegation, which was expected to provide a report back to the BSI following any MPEG meeting that might be shared with technical experts outside of the BSI.

The Board said that consultation outside the restricted circle of delegates was expected by MPEG: “While the whole set-up of the system puts particular emphasis on the need to keep input documents and the content of discussions rather confidential, it also acknowledges the necessity of some consultation with affiliated organisations for developing a technically sound standard that can be accepted by the relevant community … the MPEG set-up did not guarantee or even envisage absolute confidentiality within the relatively small group present at meetings, but did, in fact, envisage a wider discussion among experts in the elaboration of standards fit for purpose”.

From this the Board could not conclude that ‘absolute confidentiality’ existed between the members of the MPEG working group responsible for drawing up the relevant prior art documents, and that the patent application therefore lacked novelty over these documents. Instead the input documents were ‘rather confidential’.

The Board noted that if ‘absolute confidentiality’ was intended, such as to keep information strictly between the limited group of persons present at meetings, then MPEG could have required the explicit signing of confidentiality agreements. MPEG did not take this route.

Is ‘rather confidential’ a new legal development?

Confidentiality in English law is an absolute condition – something is either confidential or it is not and there is no intermediate state. Therefore it is interesting that the Board contrasted documents that are ‘rather confidential’ with those having ‘absolute confidentiality’.

But despite the Board’s wording this probably does not herald some new development in the concept of confidentiality.

The ‘rather confidential’ status identified by the Board of Appeal is essentially the same as ‘not confidential’ for the purposes of novelty and inventive step. All it seems to mean is that the disclosures were not in fact confidential even though there was some evidence that suggested otherwise.

What does T2239/15 mean for patent applicants that contribute to technical standards?

Applicants should not rely on the standardisation process to be confidential, even if the standards body is private and restricts copying and sharing of submissions. Any material that is shared outside the applicant’s organisation could count as prior art against the applicant’s later-filed patent applications.

The Board of Appeal pointed to one way in which confidentiality could be ensured for contributions to technical standards: to ensure that confidentiality agreements are explicitly signed by parties receiving the applicant’s disclosures. But we suspect that it is not practical to implement this.

Perhaps a better option might be for applicants to petition the standards bodies to change their rules to ensure confidentiality. For example, if MPEG had intended by its privacy rules to have absolute confidentiality and the EPO has found that is privacy rules to not provide absolute confidentiality, then MPEG might be receptive to such arguments.

In the meantime, an applicant has the option of reviewing all contributions to technical standards before the contributions are submitted. This would give the applicant an opportunity to file a new patent application directed to inventions contained within the contributions.

Of course this can mean that applicants have only a short time to file new patent applications. Inevitably some of these patent applications will be incomplete. But applicants are still put in a better position from filing patent applications before submitting their contributions. Because the alternative can mean no patent protection in Europe.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Christopher Smith
Senior Associate
About the author

Would you like to know more? You can talk to Christopher Smith who will be able to help. Call +44 (0)20 7242 0901


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