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FEATURE |
Secret Patents and Hidden Prior Art
This article explores the interplay between the territorial
nature of patents and the principle that novelty of an invention should be
assessed on a worldwide basis. It illustrates by way of example of the proceedings
around the
Introduction: Fundamentals of the Law of Patents
A patent is a monopoly1 granted by the State to
an individual in exchange for his disclosure and teaching of a novel and useful
invention. The individual enjoys his monopoly for 20 years2 and
thereafter, the invention is free for all to use.
An invention will be taken to be new or novel if it does not
form part of the state of the art. The state of the art is in turn defined as
all matter made available to the public by way of written or oral description
by use or any other way.3
Novelty is also to be assessed on a worldwide basis.4
Therefore, if an invention was already disclosed, commercially dealt with or
used by a person in one country, it was not possible to patent that technology
in any other country in the world.
It should be noted that secret use and technology not made
available or disclosed to the public does not form part of the state of the art
and does not affect the assessment of novelty.
An extension of this principle also meant that patent
applications filed outside of a particular jurisdiction are not considered as
part of the state of the art until they are published by the patent offices in
those foreign countries where it was filed.
This is because it is an almost universal practice in patent
offices around the world processing patent applications that these are kept
secret after filing. They are only published after formality checks and
searches are completed. This meant a significant time lapse between filing and publication.5
During this time because the application is kept secret, it cannot form part of
the state of the art in other countries at least.
Therefore, there are two dates to look out for when one
talks about patents, namely its filing (or priority) date and its publication
date.
This is especially so in the situation set out below.
The USB Flash Drive (or otherwise known commercially as the
‘Thumb drive’) is perhaps one of the inventions of the new millennium and it
will be fairly safe to say that most typical working adults living in today’s
digital age would have inadvertently come across or used such a device to
transfer and store data just as they would have dealt with a microprocessor.
The
However, the USB Flash Drive like many other great and
innovative inventions is itself not an invention thought of or built from
scratch but it is really a clever combination of existing technology with a
keen and savvy eye towards market demand and desire.
It is made possible by advent of the Universal Serial Bus
(‘USB’)6 as well as Flash memory technology. If the USB is the soul
of the
Flash memory was invented in the 1980s and has been in use
since the 1990s in the form of memory cards, memory sticks and other devices.
Unlike the floppies which use an ancient magnetic storage medium, flash memory
uses transistors and chips as the storage medium. Flash memory was widely used
in many electronic devices such as digital cameras and MP3 players but there
were very few if any attempts to use a memory card as a successor to the floppy
disks since memory cards have their own proprietary means of connection or
rather limited connectivity and cannot be used or integrated universally with
different makes of word processors or microprocessors in the market. The
arrival of the USB changed that.
Patent Application EP 1102172 A1 in the European Patent
Office
Between the
demise of floppy disks and the arrival of the
This invention consists of a typical
looking USB adapter which can be used with a memory card with flash memory. The
USB adapter in EP 1102172 A1 has a USB ‘A’ plug meant to connect to an external
device just as a
Replace the memory
card or memory unit which houses flash memory in EP 1102172 A1 with an in-built
flash drive and we have a modern day USB
Flash Drive.
The inventors of EP 1102172 A1 filed
their patent application in
On 21 February 2000, a patent
application8 for a device which eventually became known as the Thumb
drive9 was filed in
It also went through a protracted and
gruelling legal battle in Singapore for four years.11 Not much
mention was made of EP 1102172 A1 in the Singapore proceedings which were
concluded sometime in 2006 since it was never part of the state of the art of
Singapore before 21 February 2000 and did not affect the novelty of the USB
Flash Drive patent.
The legal battle for the rights in
the
The Relevant Dates
EP 1102172 A1 was filed on 22November
1999 in the European Patent Office but was only published on 23 May
2001. It should be emphasised that EP 1102172 A1 has a filing date prior to
that of the USB Flash Drive patent in Singapore but a publication date
subsequent to the same.
If EP 1102172 A1 formed part of the
state of art before 21 February 2000, the USB Flash Drive patent
which was filed on that date may arguably not be regarded as a novel invention
by pure chance of coincidence.
EP 1102172 A1 did not become part of
the state of the art in Singapore until 23 May 2001 when it was published in
the United Kingdom. This came about by virtue of s 14(2) of the Singapore
Patents Act (Cap 211) (2004 Edn) (‘the Singapore Act’) which provides:
The state of the art in the case of
an invention shall be taken to comprise all matter (whether a product, a
process, information about either, or anything else) which has at any time
before the priority date of that invention been made available to the public
(whether in Singapore or elsewhere) by written or oral description, by use or
in any other way.
Here, prior art consists of what is
made available to the public in Singapore or elsewhere. This includes prior art
from patent applications published in the United Kingdom. After publication,
anybody would be able to obtain a copy of the application and specifications
from the patent office and theoretically be able to apply or work the
invention.
But since its inventors never filed
their patent here, EP 1102172 A1 was therefore not a patent under the Singapore
Act and because it was not, s 14 (3) of the Singapore Act does not apply. Note
that unlike s 14(3) of the Singapore Act,
s 14(2) above makes no mention of the word ‘patent’.
Section 2 of the Singapore Act provides
that:
’patent’ means a patent under this
Act and includes a patent in force by virtue of section 117 (3);
Section 14(3) provides:
The state of the art in the case of
an invention to which an application for a
patent or a patent relates shall be taken also to comprise matter contained in
an application for another patent which was published on or after the priority
date of that invention, if the following conditions are satisfied:
(a) that matter
was contained in the application for that other patent both as filed and as
published; and
(b) the priority
date of that matter is earlier than that of the invention.
Priority date
for the purposes of the article means the date of filing.15
Section 117(3)
refers to the transitional provisions for patents filed under the repealed
Registration of United Kingdom Patents Act and has no relevance here.
Because EP
1102172 A1 was not a patent within the meaning of the Singapore Act, it does
not fall within the meaning of ‘an application for a patent’ in s 14(3)
therein. In fact, it was a secret between 1999 and 2001 locked away in the
patent offices of the United Kingdom and Singapore. No member of the public
here in Singapore has seen or used or knew how it works until it was published
in the
United Kingdom.
It was, however,
part of the state of the art in the United Kingdom as of 22November 1999
despite the fact that it was only published there on 23 May 2001 for all
intents and purposes.
This situation
arises by way of the operation of s 2(3) of the UK Patents Act which is
identical to s 14(3) of the Singapore Act set out above. As a recap, s 2(3)
(and
s 14(3) of
the Singapore Act) simply says that a patent application is prior art vis-à-vis
a later application even though it was published after the later application
was filed as long as it was filed earlier than that later application and it
was published as filed without amendments. The other requirement is that it is
a patent under the UK Patents Act.16
The patent application known as EP
1102172 A1 satisfied s 2(3) of the UK Patents Act in that it:
1 Was published on 23 May 2003
after the USB Flash Drive patent was first filed in Singapore.17
2 Has a priority date of 22 November 1999 earlier
than that of the USB Flash Drive patent.
3 Was published as it was filed without any
amendments.
4 Was also a patent filed under the UK Patents
Act.
EP 1102172 A1 did not fulfil the last
of these four conditions as far as Singapore is concerned but in the United
Kingdom, it fell right within s 2(3) therein which treated the application as
prior art and as though it was disclosed to the public or retrospectively on
the date of filing.
It should be noted the assessment of
novelty under the laws of both the United Kingdom and Singapore proceeds
without regard to whether the patent was in fact copied from earlier
technology. It is an objective assessment based on the available prior art.
Once it is established that there is indeed such prior art before the filing of
the patent in question, the patent is anticipated or not regarded as novel. The
patentee himself may have never seen that prior art or invention and certainly
not copied from another.
Effect
The retrospective effect of s 14(3)
under the Singapore Act and s 2(3) under the UK Patents Act leads to a
situation where different countries in different parts of the globe can have
different ‘states of the art’ at a given date. In this case, EP 1102172 A1 was
part of the state of the art on 22 November 1999 in the United Kingdom but only
23 May 2001 in Singapore. The fact that it became part of the state of the art
in the United Kingdom retrospectively did not in any way render it as a part of
the state of the art in Singapore on 22 November 1999. That is because the
wording of s 14 (2) of the Singapore Act requires actual disclosure to the
public.
The sole distinguishing factor
between Singapore and the United Kingdom was whether the inventor had filed his
application in the country or whether his patent is a patent granted under the
laws of the country. If he does or if it is, his invention becomes part of the
state of the art of a given country on his date of filing and he goes on to
gain the right of monopoly by virtue of any patent that is granted to him
there. If he does not, his invention only becomes so on the date of the
publication of his invention in another country. The act of filing not only
gives them protection in the jurisdiction in the usual sense but also an
increased time period of protection. The added time period is an incentive to
file in that country.
However, the reality is that other
than its inventors, no one knew about EP 1102172 A1 before 23 May 2001 in the
United Kingdom or Singapore. By the act of filing, EP 1102172 A1 became the
prior art in one but not the other before that date. Further, the assessment of
novelty is then based on this assumed and artificial state of affairs that EP
1102172 A1 was made available to the public as of November 1999 when it was in
fact not.
The fact that novelty which is
otherwise meant to be assessed on a worldwide basis is practically compromised
by the secret nature of a typical patent application. Unfortunately, patent
applications would in most cases be the most readily available and abundant
source of prior art since no where else can one find a more comprehensive and
detailed record of other people’s inventions than at one’s own patent office.
With the greater proliferation, use
and application of intellectual property rights, close run situations like the
above will in all probability arise again.18 This is especially so
in the case of inventions like the USB Flash Drive that caters to the craving
of the market and is in itself merely a combination and reconfiguration of
existing prior art. Chances are that there will always be more than one party
working on the same problem at the same time and coming up with similar
solutions from different parts of the globe.
Other than purely commercial reasons,
the prospective patentee should now also consider the likelihood of litigation
when making the decision to file or not in a given country bearing in mind the
existence of such hidden prior art.19
Han Wah Teng
Keystone Law Corporation
E-mail:
hanwahteng@keystonelawccorp.com
Notes
1 Section 66 of the Patents Act (Cap 211)
(2004 Edn).
2 Section 36 of the Patents Act (Cap 211)
(2004 Edn).
3 Section 14 of the Patents Act (Cap 211)
(2004 Edn) and Section 2 of the UK Patents Act.
4 See reference in parenthesis to ‘whether in
Singapore or elsewhere’ in Section 14(2) of the Patents Act (Cap 211) (2004
Edn) and similar wording in section 2(2) of the UK Patents Act. Also, the other
requirements of patentability can be found at section 15 and 16 of the Patents Act (Cap 211) (2004 Edn). These
are not discussed in the article.
5 Therefore, section 14(3) of the Patents Act
(Cap 211) (2004 Edn) provides for the relevance of such secret patent
applications in determining novelty. However, ‘patent’ here only means ‘a
patent filed under the Act’ or in Singapore under section 2 of the Patents Act
(Cap 211) (2004 Edn). See also section 2(2) of the UK Patents Act.
6 USB is strictly speaking not an invention
but a universally standardised protocol or interface for electronic devices.
7 Full title of EP 1102172 A1 is ‘A Dual
interface memory card and adapter module for the same’.
8 Singapore Patent No. 87504.
9 Thumbdrive is a registered trade mark in
Singapore.
10 In fact, one may actually suggests that EP
1102172 A1 is not really patentable as an invention on its own for want of an
inventive step or for being too obvious.
11 Suit No. 609 & 672 of 2002.
12 BL O/318/06 before the United Kingdom Patent
Office.
13 There were also various other similar patents
cited in the proceedings concerning the USB Flash Drive before the United
Kingdom Patent Office (BL O/318/06) not referred to in the Singapore
proceedings presumably for the same reason.
14 There was no finding at the end of the day
before the United Kingdom Patent Office (BL O/318/06) that EP 1102172 A1
anticipates or affects the novelty of the USB Flash Drive but the other patents
referred to at n8 above were held to have anticipated the USB Flash Drive
patent.
15 Section 17(1) of the Patents Act (Cap 211)
(2004 Edn).
16 Section 130 of the UK Patents Act.
17 Note that the inventor has a right to claim
priority or to claim his earliest first filing date when he files his patent
overseas. The earliest date is the date of his first filing in his home country
by way of the Paris Convention for the Protection of intellectual Property or
the Patent Co-operation Treaty. So the date of filing of the USB patent would
have been the date the patent was first filed in Singapore on 21 February
2007.
18 Most countries have statutory provisions
similar to section 14(3) of the Patents Act (Cap 211) (2004 Edn).
19 Take note the right to claim priority can also
lead to more nasty surprises to the prospective patentee. Suppose the inventors
of EP 1102172 A1 found out about the USB Flash Drive at an earlier time and
brought their application into Singapore.