World Patent Information 31 (2009) 54–56

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Prior art searching on the Internet: Further insights

1. Introduction

The Internet has revolutionized the search for prior art, which isperformed for each patent application. Art. 54(2) EPC (EuropeanPatent Convention), and corresponding articles of the patent lawsof the USA and of Japan, states that the prior art comprises every-thing made available to the public, in writing, by public use, orotherwise, before the filing date of a patent application. In practicethis of course means: in so far as this prior art gets into the handsof the patent granting authority. In the past, patent examinerswould search almost exclusively classified documentation: patentcollections and non-patent literature (journal articles, etc.). TheInternet, however, allows prior art retrieval in a manner which isqualitatively different. Of course, much more prior art is now avail-able than in the past, such as brochures, white papers, and applica-tion notes which can be found on company websites.

The impact and use of the Internet for prior art searchinghas been the subject of earlier publications, as is shown in Refs.[1–5]. This short communication provides further insights on thistopic based on practical examples.

An aspect of prior art via the Internet which, in my experiencein patent search and examination, is not (yet) universally appreci-ated, is that the Internet:

(a) Allows immediate global publication by anybody, any timeand anywhere with zero publication delay.

(b) Allows fast retrieval (via Google or otherwise) of this infor-mation by anybody, in particular by patent examiners look-ing for prior art.

(c) Is democratic and unregulated, which makes it much moredifficult to keep information from becoming public.

(d) Makes the world much more transparent.

These aspects of searching the Internet for prior art can haveserious consequences. In this short communication, I will presenta few examples taken from my own experience. I will only illus-trate what kind of publications can be found, sometimes to the sur-prise of a patent applicant. I will not comment on decisions takenby patent offices on the basis of this kind of prior art.

2. Academic publications in journals and on the Internet:transparency and volatility

The first aspect that I will illustrate shows that in technicalfields in which both industry and academia are active, the publica-tion delay that used to characterize academic publications, due to

0172-2190/$ - see front matter � 2008 Elsevier Ltd. All rights reserved.doi:10.1016/j.wpi.2008.08.001

the need to wait for the publication of paper journals, no longer ex-ists. For example, in many scientific circles it has always been prac-tice to circulate pre-prints of articles submitted for publication in ajournal. In the past, this would be done by hand or by envelope to arelatively limited circle of colleagues and other interested parties,and the ‘‘official” publication would then be published a year orso later. With the Internet, however, it has become quite easy tocirculate such pre-prints, and indeed special websites exist for thispurpose. Obviously, such pre-prints can then also be accessed bypatent examiners. Such a pre-print is public and qualifies as priorart, regardless of whether a corresponding article will be ‘‘pub-lished” by some paper journal or not.

An example of such a pre-print server is http://arxiv.org whichallows uploading of pre-prints in the areas of physics, mathematicsand computer science – see Fig. 1. This pre-print server is wellknown and used in scientific circles.

An example is http://arxiv.org/abs/cond-mat/0106540 whichcontains the article ‘‘Renormalization Group Approach To Error-Correcting Codes”. This article was uploaded to arXiv in June2001 by one of the authors of the article, and thereby made public.The same article, however, was published much later in Journal ofPhysics A (Mathematical and General) of February 2003. In a corre-sponding patent application, the examining division of the EPOtook the arXiv publication to be the closest prior art, not the laterpublication in Journal of Physics.

This type of prior art may be generated by mistake. However,this type of early prior art may also arise in normal circumstanceswhere a university happens to work in the same technical field as(typically industrial) patent applicants. The zero publication delayof the Internet means that academics can effectively publish priorart by simply putting a pdf, a PowerPoint file, or whatever, on theiruniversity web server. For example, when a technical standard (e.g.in the field of telecommunication) is published, then there may bepeople both in industrial labs and at universities, who get the sameidea regarding possible improvements of this standard. The zeropublication delay of the Internet then allows the university workerto effectively publish this idea before an industrial party has hadthe chance to file a patent application. This is illustrated by the fol-lowing example.

DVB-H is a standard for digital video broadcast (H for hand-held). An improvement regarding the error correction aspects ofthis standard was presented at a university seminar by a research-er in Finland, who also put the corresponding PowerPoint file onthe university web server on 10.05.2005: http://netlab.hut.fi/ope-tus/s38310/04-05/Kalvot_04-05/Joki_100505.ppt. A very similarpatent application, by an unrelated industrial applicant, was filed

Fig. 1. Part of home page of arXiv.org.

M. van Staveren / World Patent Information 31 (2009) 54–56 55

on 16.12.2005, i.e. about 7 months later. In the past, such univer-sity presentations and seminars were not accessible to patentexaminers, except if some party (e.g. during patent opposition)would present this kind of prior art to the examining or oppositiondivision. This is only one example which illustrates the fact thatthe academic world has become much more transparent to infor-mation hunters such as patent examiners.

Another aspect of this academic transparency is that PhD thesesare much easier retrievable and accessible than in the past, asmany universities place them on the internet, classified to depart-ment (electrical engineering, computer science, etc.). Such a thesiscan be found, downloaded and printed by a patent examiner in notime, and cited in the search report.

An example is http://www.ece.umr.edu/~weeksw/fullsurface.pswhich is a PhD thesis about two-dimensional data storage (as op-posed to a normal DVD or CD, which has coding only along a one-dimensional track). This PhD was published in 2000. A rather sim-ilar patent application by an unrelated industrial patent applicantwas filed with priority of October 2001.

This PhD thesis also illustrates another aspect of the Internet:its volatility. The URL mentioned above went dead some time afterthe search report had been established, and is not accessible any-more. However, the thesis is still accessible via http://www.archi-ve.org which archives Internet web pages that are found using webrobots. The thesis is listed on archive as having first been archivedin April 2003 (see Fig. 2).

When an internet web page has been found that is ‘‘too late”,i.e. has become public after the priority date of an application,then a patent searcher may try and have a look on archive.orgto see if there is a relevant archived earlier version of the webpage.

Fig. 2. www.archive.org search for thesis no l

3. Workshop and conference publication on the internet

It may also be mentioned here that simply googling for aninventor’s name can yield interesting results, more often thanone might perhaps expect. Inventors should be aware of the fact,that presenting something in a workshop can easily land on theinternet and thereby qualify as prior art. In connection with this,it should be noted that Europe does not know a grace period asit exists, e.g. in the USA.

The fact that the Internet may provide unexpected prior art isillustrated by the following example:

A conference would start on 25.06.2000. As is often done, a pat-ent application corresponding to an article to be presented at thisconference was filed a week earlier, at 19.06.2000. However, on25.05.2000, an ‘‘advance program” was put on the internet:http://www.dia.unisa.it/isit2000/elenco.htm; this program con-tained descriptive titles of the articles to be presented at the con-ference, in particular a title ”Reduced-State BCJR-typealgorithms”. The patent application stated that reduced state algo-rithms were known, but not yet applied to BCJR-type algorithms.The pre-published title of the article, albeit short, constitutes priorart, and carries a message that is understood by a skilled reader.

4. Technical data regarding standards, on the internet

Not only preprints are distributed via the internet. For example,the telecom standardization body 3GPP regularly holds meetingswith industry representatives about technical proposals, compara-tive tests, etc., and subsequently places reports of these meetingson the Internet. An example is 3GPP TSG RAN WG1/WG2 JOINTMEETING ON HSDPA 12A010044, 05-04-2001, Sophia Antipoli,FR, SAMSUNG ELECTRONICS: Enhanced Symbol Mapping methodfor the modulation of Turbo-coded bits based on bit priority. Thisreport was published on 06.04.2001, i.e. one day after the meeting,on an ftp server: http://www.3gpp.org/ftp/tsg_ran/WG2_RL2/TSGR2_AHs/2001_04_WG1_HSDPA/. A patent application with pri-ority date of 21.12.2001, about half a year later, covered rathersimilar material.

Similarly, mailing lists, blogs, etc. can just as well contain rele-vant prior art.

A final example illustrates that material that would have beenunknown or hard to obtain in the past, may now be easily retriev-able. There are technical standards (e.g. Blu-Ray and DVD) forwhich there exists technical standard books. Such books must berequested from a corresponding licensing authority, who decideswhether the requester may buy the books, and the buyer has tosign a non-disclosure agreement (NDA) in order to obtain thebooks. The existence of such NDA’s has been discovered via Google,and such an NDA has been downloaded from the website of anindustrial licensing department. This has led to a disputeabout whether patent applications to recording media, etc. that

onger available on its original web page.

56 M. van Staveren / World Patent Information 31 (2009) 54–56

are subject to such an NDA, are sufficiently disclosed in the sense ofthe patent law. A first decision in this respect has recently been is-sued by the Board of Appeal of the EPO: T82/07, which rejected anappeal against a refusal on the basis of insufficient disclosure.

Web pages often refer to other web pages. These cross-refer-enced web pages may themselves have changed. Therefore, it ispossible that it cannot be established exactly what informationwas made available to the public by a website on a particular date.This could be of legal importance.

As is hopefully clear from the above examples, the Internet haschanged the landscape of prior art. Whoever is interested in pat-ents should be aware of this.

Acknowledgements

This article is based on a presentation given by the author at theSearch Matters 2008 seminar at the European Patent Office in TheHague in April 2008.

References

[1] Archontopoulos E. Prior art search tools on the Internet and legal status of theresults: a European Patent Office perspective. World Patent Inform2004;26(2):113–21.

[2] Jonkheere C. The Internet for search project at the EPO. World Patent Inform1997;19(2):93.

[3] Verhulst W. The impact of the Internet on prior-art searching in a patentenvironment. World Patent Inform 1997;19(2):95.

[4] Black T, Hayes G, Lintz P, Purcell AF. Use of the Internet in the USPTO for thepatent examination process. World Patent Inform 1997;19(3):153.

[5] Jones PBC. Searching for prior art on Internet. <http://www2.ari.net/foley/search-b.html>.

Martin van StaverenEuropean Patent Office, Patentlaan 3-9,

Rijswijk (ZH), 2288 EE,The Netherlands

E-mail address: mvanstaveren@epo.org