Fraud on the EPO – Introducing Information Disclosure by the Back Door?

A thorough and accurate prior art search is an important step in the examination of any patent application, since the state of the art at the relevant date must be determined before novelty and inventive step can be assessed.  Patent specifications have conventionally included a “background” section which briefly discusses the state of the art in the context of the invention, providing the patent office with a starting point for the search.  However, in many jurisdictions, applicants are not specifically required to disclose any prior art.

This was the case at the European Patent Office (EPO) until recently, when the introduction of the amendments to the European Patent Convention (EPC), collectively referred to as “EPC 2000”, gave the EPO power to request that an applicant provides information on prior art taken into consideration in national or regional patent proceedings for related applications.  Although not yet widely used, it is expected that these ‘Rule 141’ requests will become more commonplace in future.  Indeed, many patent offices already require applicants to disclose such information as standard.

A far stricter duty of disclosure is enforced by the United States Patent and Trademark Office (USPTO).  US regulations require the filing of an Information Disclosure Statement (IDS) whenever the applicant or attorney becomes aware of prior art which may be “material to patentability”.  Neglecting this duty can have severe consequences.  For example, if an alleged infringer can prove that there was an intentional failure to disclose relevant prior art during the application process (the “inequitable conduct” defence), all claims of the patent are rendered unenforceable.

The USPTO’s approach has not been widely adopted by other jurisdictions.  This may be because rather than being made more efficient, the search process is frequently complicated by the filing of IDSs which contain many dozens or even hundreds of citations.  In many cases, this may simply be due to attorneys erring on the side of caution in determining which information is “material to patentability”, given the potentially serious consequences of failing to disclose relevant information.

The extra workload imposed by the need to review the prior art in lengthy IDSs is of significant concern to the USPTO.  To tackle this problem, the USPTO considered introducing new legislation which would require supplementary information to be provided when a lengthy IDS is filed, indicating which parts of the citations are most relevant.  The proposed legislation raised concerns among applicants and attorneys as to the significant additional burden and therefore cost of compliance. At present, these rule changes have been indefinitely postponed, but there remains the possibility that similar proposals may yet be introduced at some point in the future.

EPO to Introduce Information Disclosure?

Despite the problems associated with the US information disclosure system, there are signs that the EPO may be considering a similar approach.  In a recent case, the EPO sought to reject an application on the grounds that the specification failed to cite a relevant prior art document of which the applicant was alleged to be aware.  The basis for this objection was a rule which states:

“The description shall… indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art”  [Rule 42(1)(b) EPC]

In this particular case, the prior art document in question (D1) was a conference paper which listed the inventor as a co-author.  In the summons to attend a hearing on the matter, the examiner suggested that it was therefore “beyond reasonable doubt that the applicant was aware of D1”, and hence failure to acknowledge it contravened Rule 42(1)(b).  The examiner further argued that the phrase in the Rule “useful… to draw up the European search report” had to be interpreted as meaning that the prior art had to be mentioned in the description as filed, meaning that the objection could not be remedied by amendment during examination.

Interestingly, the summons also went so far as to suggest that the applicant had intentionally avoided citing D1 in the specification as filed, which effectively amounted to an allegation of fraud on the EPO, the legal basis for which is at best unclear.  In the event, this allegation was withdrawn at the hearing, without debate.

However, the main objection that Rule 42(1)(b) was not satisfied (i.e. regardless of whether the failure to cite the document was intentional or not) was extensively debated.  Such a strict interpretation of Rule 42(1)(b) does not appear to be justified from the wording of the provision, given the presence of equivocal terms such as “can be regarded as useful” and “preferably”.  Furthermore, the suggestion that Rule 42(1)(b) must be applied at filing represents an inconsistent approach by the EPO, given that the same rule is also commonly used by examiners as the basis for insisting on amendment of the description to acknowledge prior art raised during examination.

It also seems that if Rule 42(1)(b) is to be applied strictly, it is necessary to establish that the applicant had actual knowledge that some particular prior art was relevant to the invention (c.f. “as far as is known to the applicant”).  The issue of “knowledge” is complicated further when considering disclosures made by the inventors, potentially even before they had any connection to the applicant.  Given the consequences of a Rule 42(1)(b) objection, it seems reasonable to expect that a high standard of proof would be required as to whether the applicant had knowledge of the prior art in question.

Nevertheless, the examining division did not accept these arguments and maintained that it was “beyond reasonable doubt” that the applicant had knowledge of D1.

The objection was eventually overcome on the facts of the case, on the basis that the prior art which was cited in the description as filed was sufficiently similar in content to the disclosure of D1 as to be equally “useful”, and so Rule 42(1)(b) was satisfied.

However, it is our understanding that the EPO remain committed to applying a similarly strict interpretation of Rule 42(1)(b) in future cases.

As a final note, it is interesting to draw a comparison with recent developments regarding divisional applications, where the EPO first tried, unsuccessfully, to use existing EPC provisions to prevent ‘abusive’ practices, before later amending the EPC to explicitly prohibit such practices.  Given the recent move by the EPO to apply a strict interpretation of Rule 42(1)(b), this may be an indication that the EPO would like to see a legal obligation on applicants to disclose relevant prior art of which they are aware.  At present, it is debatable whether Rule 42(1)(b) can be used as a legal basis for imposing such a duty of disclosure.  However, should the EPO not succeed in changing the behaviour of applicants through the use of Rule 42(1)(b) objections, an amendment to the EPC to explicitly provide a duty of disclosure may become a more realistic prospect.

By Jan Walaski and Robert Cork

Jan Walaski 19 Jun 2009

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