Tuesday, January 5, 2010

Art.54(2) - When is something publicly available?

One of the problems learning the EPC is the large amount of detail presented in case law. For certain subjects, it helps to understand the general principles before you look at the details.

One such area is Art.54(2) - when is something made available to the public ?
For those doing the EQE, this is important for the C & D exams.

Terminology: A disclosure means an explanation of the invention - this does not automatically mean that it is publicly available.

Whether something is available to the public (Art.54(2)) actually means whether the invention could reach someone who could practice the invention. That someone would be the appropriate skilled person.

You therefore have to look at the form of the disclosure and the route the invention could take to the skilled person, and evaluate at any barriers. If an enabling disclosure of the invention can reach the skilled person in an understandable form by any route, then it is available to the public.
Barriers are for example, physical walls, non-disclosure agreements, insufficient understanding by a person en route, a non-enabling disclosure.

The other important aspect is the ability to prove what was made available.

For example, a new type of windmill wing is placed in a garden at a wedding party. The prototype wing is in full view of the invited guests - the guests are all employed in the field of windmills, so anything visible could be understood. There are no secrecy agreements. The guests cannot examine the wing in detail.
Therefore, each guest can pass on whatever information they can get by viewing the prototype - this depends on their own level of knowledge and what they could see.
The content of disclosure is no more than what is visible. However, the content as viewed by each guest is different depending on their level of expertise. Each guest is free to pass on the information to someone else, including the skilled person, so each guest is a route for the disclosure to get to a skilled person. The content of the disclosure has been modified by the expertise of the guest, so there are many different routes and contents by which the visible characteristics of the windmill wing have been made available to the public.
As the disclosure is in a permanent and visible form, there may be evidence available to support this - photos, delivery note for the prototype, etc.

Assuming the core of the wing is an invention. The core of the wing was encapsulated, and therefore was not visible, so none of the guests could see it. So it could not have been made available to the public by the guests viewing the prototype.

If someone explained about the core at the party, then the content of the disclosure was no more than what was said. The content of the disclosure made available to the public via each gust depends on the level of expertise of each guest, and what they could hear. Proof is a major problem with oral disclosures, because it generally does not generate any evidence.

If the information was provided in a permanent form (printed or recorded), then the own level of knowledge plays no role because it could be given to a skilled person. It is therefore also made available to the public. The content of disclosure is then only limited to what a skilled person could learn from the printed form.

If each guest was given a windmill wing to take home, then the content of disclosure is only limited by analysis techniques available to the skilled person.

So, being available to the public depends on all the circumstances. And a barrier is only a barrier if it is not breached. For example, if all the guests had signed a non-disclosure agreement, then any disclosure at the party would not have been made available to the public, even if it was in a permanent form.
However, if one person publishes the information (breaching the non-disclosure agreement), it is still made available to the public (Art.54(2). In such a case, it may be possible to exclude such a publication as a non-prejudicial disclosure under Art.55

Typically, in evaluating public availability, you look first at the route: could a disclosure reach the appropriate skilled person?
Then at the carrier(s) of the disclosure: what would the skilled person learn from the content of the disclosure?
Finally, consider what can be proved.

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