One of the fundamental aims of the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) is the harmonization and further development of IP law on an international level. Part of this effort, and the subject of this article, is AIPPI’s study question Q289. Q289 concerns a matter of patent law that various jurisdictions approach quite differently, namely prior art disclosure requirements for patent applicants and the consequences of non-compliance.
As is the case with all AIPPI study questions, Q289 was asked of and is being answered by AIPPI’s respective national groups. The collection and evaluation of their answers allow insights into IP laws around the world, which in turn allows AIPPI to identify divergences, shared aims and shared issues. These findings form the basis of resolutions that are adopted at AIPPI’s annual world congress. Study question Q289 is currently in the midst of this process as it is one out of four study questions that will be discussed in the upcoming AIPPI world congress in Hangzhou, China, in October 2024.
One main purpose of Q289 is to achieve a basis for international harmonization of disclosure requirements for patent applications. In the United States, for example, each individual associated with the filing and prosecution of a patent application has a duty to disclose information material to patentability (in particular in the form of Information Disclosure Statements (IDS)). Failure to satisfy this disclosure requirement can result in the patent becoming (partially) unenforceable. At the other end of the spectrum are countries, such as Germany, where the applicant is only obliged to cite the prior art known to them that may be relevant for understanding the invention and its scope of protection. Failure to satisfy this obligation has practically no consequences after grant.
One key aspect of the IDS and similar disclosure requirements is to provide examiners with access to the available relevant prior art. Via the IDS, the examiners can gain access to prior art, such as company presentations or materials that they would not have encountered via an ordinary prior art search that often mainly focuses on patent literature. With the overall technical progress and founding principles of patent law in mind, the authors are using this article to provide a German view on the harmonization of disclosure requirements, and to summarize the answers provided by the German National Group of AIPPI to study question Q289.
Current situation in Germany and the European Patent Office
Under German law (Section 34 (7) German Patent Act (PatG), Section 10 (2) no. 2 German Patent Ordinance (PatV)), the applicant has to cite the prior art in the application that may be relevant for understanding the invention and its patentability, including citations known to the applicant. The German Patent and Trademark Office can request the applicant to specify the prior art to the best of the applicant’s knowledge, fully and truthfully, and to include the prior art documents relevant to the assessment of the invention in the description. This is the case in particular if the applicant fails to indicate any prior art in the application.
For European patent applications, applicants are required to submit a copy of the results (including a search report) of any search carried out by the authority with which a priority application was filed (Rule 141 Implementing Regulations of the European Patent Convention (EPC)). The European Patent Office can also request that the applicant submits prior art documents of parallel proceedings (Article 124 EPC). The prior art encompassed by these rules includes both patent literature and non-patent literature, i.e., anything that is prior art. Neither patent office requires the applicant to evaluate the prior art under patentability criteria or to provide any assessment to the examiner. The main purpose in both cases is to provide the prior art background necessary to understand and examine the claimed invention.
There is no requirement to provide all documents known to the applicant to either patent office and, in particular, there is no requirement to provide all documents identified in parallel proceedings in other regions or nations at the time of filing. However, if an applicant asserts that they are not aware of any relevant documents, this assertion will be deemed sufficient unless there are clear grounds for doubting its veracity.
While any failure to comply with the patent office’s requests for (limited) information about prior art can lead to the rejection of an application, a failure to provide prior art the applicant knew or must have known about during prosecution is neither a ground for revocation of a granted patent nor does it directly affect the enforceability of a German or European Patent before the German courts.
However, there can be indirect consequences of a concealment of relevant prior art. A potential infringer of a patent may claim damages against the patent proprietor if the assertion of the patent turns out to be unlawful because of its (subsequent) invalidation based on the originally undisclosed prior art. In this scenario, the applicant’s failure to disclose this prior art during prosecution may meet the requirements for the existence of negligence.
One related question discussed by the German national group was whether an omission of prior art also constitutes procedural fraud under the German Criminal Act (StGB) if the patent is later enforced in court. There is no precedent in this regard, and the majority of the German national group concluded that this is not the case because the deception is made vis-à-vis the Patent Office, which does not directly dispose over the assets of a third party, and which is a strict requirement of procedural fraud.
Recommendations for harmonization
In accordance with its good experiences with its national law, the German national group recommends internationally harmonizing disclosure requirements at the time of filing, so that they are limited to the prior art which facilitates the understanding of the technical context and the advantages of the invention from the applicant’s point of view at the time of filing. Any obligation beyond this would result in unhelpful “over-compliance”, or require the applicant to make a legal assessment of the actual public accessibility of the prior art and its technical relevance, which should be generally the task and obligation of the examination in the patent offices.
Disclosure obligations should not be overly burdensome and should not trigger undue costs for the applicant without providing any material benefit. Technical relevance of prior art can be difficult to assess, especially in advance and at the very beginning of the prosecution, and may vary based on individual judgment. Broadening the disclosure requirement beyond the immediately relevant prior art from the applicant’s point of view would create uncertainty for the right holder, who could not be sure if a court will agree with their assessment. To avoid uncertainty, applicants might have to over-disclose technical information during the application process. As a result, the patent offices could be buried in references, resulting in difficulties identifying what is actually relevant.
Applicants may also inadvertently disclose proprietary know-how and trade secrets, thereby weakening their competitive position. In an age of immediate access to almost any type of information via the Internet and the perusal of highly sophisticated search engines and databases by the patent offices, the need and justification for relying on prior art disclosures by the applicants is highly diminished. Instead, the German national group recommends even more and better collaboration between patent offices globally, ensuring that patent families are automatically connected and search results shared across offices.
Beyond the obligation to disclose the relevant prior art from the applicant’s point of view at the time of filing, non-disclosure of further prior art by the applicant at the time of filing should not lead to the refusal of a patent. A granted patent should also not be revoked merely because any prior art, which neither anticipates nor renders the invention obvious, was not disclosed. In addition, basing a revocation or even unenforceability of a patent merely on the fact of non-disclosure of such ultimately irrelevant prior art (relevant prior art, however, must result in the patent’s invalidation) could violate the fundamental right to intellectual property (e.g., Article 17 (2) of the European Charter of Fundamental Rights). As stated in a ruling of the German Federal Constitutional Court for instance, this fundamental right grants the inventor the right to a patent to their intellectual creation, which excludes use by anyone else. If the inventor was obliged beyond this to disclose their knowledge of relevant prior art, or if they had to search for such prior art in order to obtain or retain a patent, this could raise the concern of a disproportionate restriction of the fundamental right to intellectual property. Such prior art, that does not challenge the patentability of the invention, could only give the patent examiners the impression that they had a complete and good overview for their decision, but it would not be a relevant fact since it neither anticipates nor renders the invention obvious. It does not seem proportionate to make the grant of a patent and the question of its revocation dependent on disclosing such an overview, including aspects that in the end are not decisive for the patentability of the invention.
This does not mean that there should be no disclosure requirements at all. If an applicant fails to provide the relevant prior art that facilitates an understanding of the invention, the patent office should request supplementary information. If the applicant does not provide any statement on the prior art upon written request, the application may be deemed to be withdrawn.
Moreover, discretionary decisions of a competent authority could take into account that the applicant did not disclose relevant prior art deliberately and in bad faith. This could be relevant for preliminary injunction proceedings and for the question of staying infringement proceedings in bifurcated proceedings, as well as for cost decisions, e.g., in opposition proceedings before the patent office where the parties generally have to bear their own costs. Any failure should be remedied once the patent has been held to be patentable by a competent authority based on an assessment of the previously undisclosed prior art.
Conclusion
International harmonization with limited disclosure requirements is desirable in order to reduce the burden on applicants. Excessive disclosure requirements make the patent system less attractive, particularly for smaller entities. Instead, relevant prior art could be easily stored at a single source accessible to all examiners of various jurisdictions, such as the Global Dossier provided by the World Intellectual Property Organization (WIPO).
Hence, the German national group has opted to reduce disclosure requirements for applicants and instead foster collaboration between the competent authorities that examine applications in order to further improve patent examination procedures while reducing overall costs for the competent authorities and applicants. Noncompliance with disclosure requirements should under no circumstances justify the revocation of a patent, if the prior art that was not disclosed beforehand turns out to be not decisive for the patentability of the granted patent.