New England Biz Law Update
As corporate counsel you may be responsible for overseeing issues concerning your company’s website, such as development contracts, potential trademark and copyright infringement, and various cyber-law issues such as linking and meta tags.
If your company’s website is interactive, you may also be concerned about issues of contract and e-commerce law as it relates to buying and selling goods over the Internet. Now that the Internet has made all information on websites accessible to the world, you should also be concerned about the potential preclusion of patent rights with respect to posting technical information about your company’s unpatented inventions or your new or potential products on your website.
In addition, if the proper patent filing steps are not first undertaken, any desired patent protection for “business methods” that can be found on your website may also be lost.
Inventors and corporate management usually have an overwhelming desire to publicize their company’s inventions and to advertise their company’s cutting edge technology to the world. They often do so through their websites, in addition to publishing articles in technical journals and speaking and disclosing new or potential product information at trade shows.
It is widely understood by corporate counsel that the contents of technical articles and information of a technical nature, that is anticipated to be disclosed at trade shows, should be reviewed beforehand by patent counsel so that prospective patent rights are protected. However, what is rarely understood is that website disclosure of technical information is also very dangerous to prospective patent rights if the proper filing steps have not been taken.
A relatively new and quickly growing area of patent law is business method-type patents. “Business method” is a generic term that has been used by many to describe various types of methods and apparatuses related to financial and business data processing, methods of teaching, methods of e-commerce, and the like. As corporate counsel, you need to be aware of this relatively new area of patent law and understand that potential patent protection for your business methods may be lost if the information is placed on your website before the proper filing steps are taken.
Prior Art
Decisions concerning whether to pursue a patent virtually always hinge on the level of knowledge appearing in the prior art. If corporate counsel do not proactively seek patent advice and protection for their inventions and business methods, what they put on their websites may be considered a printed publication and become prior art against their own subsequently filed patent applications.
All corporate counsel should have at least a basic understanding of patent law. The most basic concept is that an inventor cannot patent an idea that lacks novelty. If an invention does lack novelty it can be established by showing that the invention was described by someone else in a printed publication before the date of invention by the applicant or described by the inventor more than one year before his/her patent application is filed in the United States. (In Europe and most other countries, there is no year grace period.)
Information in a printed publication precludes novelty because it represents the public’s base of knowledge, since such information is recorded in a non-transitory nature and is accessible by the public.
If website information is determined to be a prior art printed publication, as most believe it will, what you put on your website may preclude your prospective patent rights in three distinct ways.
First, during the prosecution of your application, both you and your patent counsel have a duty to disclose any known prior art to the Patent and Trademark Office (PTO), including prior art contained on your own website. Second, third parties may submit prior art information contained on your or any other website to the PTO in order to show that your patent application lacks novelty. Third, the PTO may conduct prior art searches of various commercial online databases on its own, or even request that you submit any information, including information contained on your website, that relates to the claimed invention in your patent application.
The Internet plays an increasingly important role in providing information to the public. Due to this large increase of information now available on the Internet, courts and the PTO are faced with whether website information will be considered a printed publication, and thus able to invalidate or preclude an otherwise valid patent.
Back To The Future
Since no court has yet decided this issue, one must look to previous court decisions and analogize their rulings and facts to information on the Internet.
The phrase “printed publication” first appeared in the Patent Act of 1836. At that time, the printing press was the only means of widely distributing copies of a work. Therefore, the term “printed” suggests that many copies of the document are made and the term “publication” suggests either wide dissemination or accessibility by the public.
With the advancement of new technology the law has tried to keep pace. For example, with the advent of xerographic, microfilm and magnetic disk or tape technologies, courts have accepted these technologies and expanded the definition of “printing” beyond those documents produced by a printing press.
To extend the concept even further, courts now appear to have accepted information on any tangible medium as within the definition of “printed.” Internet information is stored in some computer’s hard drive and therefore is embodied in a tangible medium of expression.
From that tangible medium, a “literally” printed copy may be produced at the information seeker’s computer. Therefore, even though no court has directly addressed the issue, it seems very likely that information on the Internet would be considered “printed” in the context prior art.
The current focus of the courts on the meaning of “printed publication” is mainly on “publication”, i.e., the dissemination aspect, rather than the “printed” issue. Courts determine printed publication status on whether the document is publicly accessible.
For example, a single typewritten thesis in a library is considered to be a printed publication if it has been indexed and cataloged so that the public can, in fact, gain access to it. However, merely indexing alphabetically by the author’s name is inadequate to constitute accessibility.
The current test is whether a document has been disseminated or otherwise made available so that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.
The Internet analog of a library card catalog or computerized catalog is the search engine. A search engine is a computer program that accepts a user’s search terms for information about a specific subject. The engine searches through indices of millions of Web pages and transmits to the user a list of site addresses at which this information is available.
Search engines are quite variable, at this point, in their coverage and search effectiveness. Some search algorithms are excellent for some categories and inferior for others.
Thus, whether Internet information can be a prior art printed publication is intensely fact dependent. Search engines are becoming more effective by the day, and currently most Internet information is reasonably well accessible to the entire world.
This means the ability to find a document is at least equal to, if not better, on the Internet than through a thesis search in libraries across the country. Therefore, even though no court has decided the issue, most experts believe that information posted on websites will be considered a “printed publication.”
Corporate counsel should be scrupulous on posting technical information about their unpatented inventions and their new or potential products on their websites. If the company already has a system in place for screening the contents of technical articles and information of a technical nature that is anticipated to be disclosed at trade shows, it should implement the same system for technical information prior to its being placed on their company’s website.
Corporate counsel should also be diligent regarding potential business method-type patent protection that may be available to them, especially before making significant additions to either the content or structure of their websites.
Trevor Arnold, an associate at Burns & Levinson LLP, practices in patent, trademark and copyright law. He can be reached at [email protected].
