Standards-related documents as prior art - the EPO's approach

Technical standards are developed by standard-setting organisations (SSOs), such as the IEEE and ISO/IEC. Within these organisations, the committees that meet to set each standard are made up of experts in the relevant field. For many of these individuals, the underlying aim is to submit their (or their employer’s) patented technology and persuade the committee to base the technical standard on that technology. Once the technology becomes a normative part of the standard, any implementation of that standard is sure to be covered by the patent.

Membership of the committees is usually open to anyone who can demonstrate a relevant interest in the standardisation activity, as well as the necessary technical expertise. So, although not just anybody can join, in practice nobody with a legitimate reason to be involved would be excluded. Nonetheless, the group is closed and access to the standardisation process is controlled – only the named technical experts can attend the meetings; document-archives are often password protected; and the experts may be instructed not to share information outside of the group. To this extent, the deliberations of the committee are not accessible to the general public – only selected documents, such as draft versions of the standard, are published for wider review.

The constitution and operation of these committees creates a grey area. On the one hand, the standard-setting process may be private; but, on the other hand, the group that is party to this private process is rather broadly defined. Should disclosures within this group (in particular, proposals for technology to be incorporated into the standard) be considered confidential or public? Some SSOs have explicit rules that try to define this, but many do not. And the availability (or not) of such disclosures as prior art may be decisive for the validity of subsequently filed patent applications that read onto the standard.

Case Law

The Technical Boards of Appeal at the European Patent Office (EPO) have considered some related questions in decisions T 202/97 and T 838/97.

In T 202/97, the Board held that a draft standard sent with an agenda to members of an international standards working party was not normally confidential. The Board’s reasoning was that the task of drawing up standards precluded an obligation for the draft standard to remain confidential. However, this does not appear to completely settle the question of whether individual contributions by technical experts are public disclosures or if they remain private prior to their inclusion in a draft standard. It could be argued that the content of such contributions can legitimately be confidential – especially if the technology is ultimately rejected by the SSO and never becomes part of the standard.

In T 838/97, the disclosure in question was a presentation to a conference. The attendees at the conference were instructed that the information presented was not to be used without the specific authorisation of the contributor. On this basis, the Board held that the participants were under an implicit obligation of confidence, and therefore the disclosure was not available to the public.

Practice

The current practice of the EPO when examining patent applications is based on a tacit assumption that if the EPO has access to a document then it must also available to the public. This is seen, for example, in the way that patent applications related to standards set by the Moving Picture Expert Group (MPEG) are examined. It is understood that the EPO has gained access to the archive of meeting documents by becoming a member of an organization which, in turn, has a liaison relationship with MPEG. As a result, EPO Examiners regularly cite MPEG documents against patent applications in the field of video coding and related subjects.

We are aware of a number of appeals against the rejection of patent applications in these circumstances. To date, none of these appeals has been successful and the Boards’ preliminary opinions appear to have endorsed the existing practice of the Examining Divisions. The Boards have referred to various factors including:

• The absence of compelling evidence that the contributions were confidential (such as a written secrecy agreement);
• The fact that the participants at the meeting were the experts in the technical field and therefore members of the pertinent public;
• The doubt that, even if contributions for a specific meeting were intended to be confidential, the obligation of confidentiality may or may not have continued after the end of the meeting.

In one opinion, the Board also distinguished from T 838/97 on the basis that the conference in that case did not concern standardisation. The implication appears to be that – in the eyes of the EPO –  standardisation meetings are deemed to require a higher degree of openness than research conferences.

Several practical lessons can be drawn from the EPO’s current stance. Obviously, those intending to submit technology for standardisation should ensure that a professionally drafted patent application has been filed before any disclosure to the SSO. This also helps to protect against unscrupulous participants who might file their own patent application immediately after learning of your proposal (which is not unknown in the history of standards meetings).

For those wishing to challenge the validity of standard-essential patents via third-party observations before grant, or in opposition proceedings after grant, meeting records or other evidence generated during the standardisation process could be a valuable source of prior art. It appears that the EPO would be willing to treat as prior art anything submitted to or produced by an SSO, based on the earliest date of submission or dissemination.

If SSOs wish their internal deliberations to be regarded as confidential, then they need to put in place measures such as confidentiality agreements or regulations that bind all participants. These should be explicit about the duration for which documents must be kept secret. Individual participants could try to exert some control by marking documents as confidential, but this might not be sufficient to persuade the EPO of a lasting confidentiality obligation.

If you require advice or further information about any of these issues, please contact us.