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EPO – TBA reconsiders the standard of proof required for internet disclosures

18 Nov 2014

Pointsec Mobile Technologies AB (Appellant Opponent) v. Bouygues Telecom (Respondent Patent Proprietor), Technical Board of Appeal 3.5.06, 21 May 2014, Case No. T 0286/10-3.5.06 "Sécurisation d'un accès à une ressource numérique/BOUYGUES", reported by Stefan V. Steinbrener, Bardehle Pagenberg

Technical Board of Appeal 3.5.06 reconsiders the standard of proof required for establishing public availability of internet disclosures. In the Board's view, the principle of free evaluation of evidence applies, thus leading to a decision on the balance of probabilities. The Board holds that there is no legal basis for a stricter standard of proof in respect of prior art originating from the internet.

Internet publications play an ever increasing role in determining the relevant prior art and thus cannot be ignored. However, unlike conventional paper publications, internet disclosures present specific difficulties, notably in that they may have been modified in the course of time without such modifications being reliably traceable.


These immanent difficulties induced Board 3.2.04 to require a strict standard of proof ("beyond any reasonable doubt" or "up to the hilt") for public availability of internet disclosures in its decision T 1134/06 "Internet citations/KONAMI" of 16 January 2007 (affirmed by Board 3.3.04 in decisions T 1875/06 and T 1213/05 and by Board 3.3.05 in decision T 19/05; distinguished by Board 3.2.03 in decision T 2339/09 and by Board 3.3.08 in decision T 990/09). Hence, despite the issue's topicality, there is a sustained uncertainty arising from the existing case law in respect of proof requirements for internet disclosures.

In the recent case T 286/10 (in French), Board 3.5.06 took this issue up again and declared any specific proof requirements for internet disclosures to have no legal basis. In the Board's view, in order to remedy the difficulties associated with internet disclosures, it was not necessary to derogate from the application of the common standard of proof according to which the existence of a prior publication is to be established by evaluating the probabilities according to the circumstances of the case. In this respect, the Board follows decisions T 2339/09 and T 990/09 under the premise of free evaluation of evidence.

In order to justify a strict standard of proof for internet disclosures, T 1134/06 had referred to decision T 472/92. However, T 472/92 also confirmed the constant jurisprudence of the boards of appeal, according to which the evidence was generally evaluated in accordance with what seemed most probable, and only made an exception when a prior use was alleged where practically all the evidence lay within the power and knowledge of the opponent.

In the present case, the Board did not consider the circumstances of internet disclosures to be comparable to a prior use situation so that T 472/92 could not be relied on to strengthen the proof requirements. All in all, the Board concluded that, as a matter of principle, internet publications did not require a different standard of proof; the uncertainties associated with these disclosures had to be removed by providing a sufficient degree of probability and establishing a presumption of public availability to the conviction of the judge. There was no reason to increase the degree of probability to the extent of lack of any reasonable doubt. 

The Board also did not arrive at the conclusion of T 1134/06 that internet archives were basically not reliable. In particular, the Board held that normally the mere fact that a document had been archived at at a certain date, without any particular circumstance arousing suspicion, already justified the assumption that public access to the document was possible on the date of uploading it to the internet and then via the Internet Archive shortly afterwards.

Although the Board did not exclude the possibility of doubts as to individual entries in the Archive, it believed that the Archive itself sufficiently guaranteed the presumption of a reliable and trustworthy source of information so that an opposing party, depending on the case, had to produce evidence casting doubt on that assumed reliability and thus refuting that presumption. Consequently, a general allegation of lack of reliability of the Internet Archive was not sufficient to question the date of public access to an archived document.

For the text of the decision (in French), see here

A more comprehensive summary of the decision (in English) will be published in Bardehle Pagenberg IP Report 2014