Unwired v Huawei - Priority date and time zone

Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors
[2015] EWHC 3366 (Pat) (23 November 2015)
Link to decision

Key points

• The allegedly novelty destroying document was published on a server a few hours before the filing of the US priority-founding application. If you take Central European Time (CET), both moments were on the same date. If you take the time zone of Hawaii, the moment the document was published was in the evening and the filing and the next morning, such that the document forms prior art.
• Judge Birss decides that the time zone of the patent office of filing the priority founding application (office of first filing) to decide the dates for prior art under Article 54(2) EPC. Therefore, a document only forms Article 54(2) EPC prior art if it is published before midnight at the start of the filing date of the priority founding application in the time zone of the patent office where that application was filed.
• However, for prior rights under Article 54(3) EPC, you compare the filing dates as accorded to the applications, irrespective of time zones. A European patent application claiming priority of a United States application can form a prior right for a European patent application claiming priority of a Japanese patent application, even if the US patent application was filed an hour later, because at 8 am in Japan is 6 pm in the USA of the date before.

Reasons

1. The prior art relied on is the Ericsson TDoc. This document was uploaded to a publicly accessible server for consideration at an ETSI Working Group Meeting. It is not in dispute that the Ericsson TDoc amounts to an enabling disclosure of the invention, the issue is whether it formed part of the state of the art
   


2. The facts are these:




i) The first thing which happened was that the Ericsson TDoc was uploaded by Ericsson (in Europe) onto the ETSI file server. This occurred when the date in Europe was 8^th January 2008. The upload was in preparation for a meeting of the relevant 3GPP committee which was considering the design of the RLC layer in LTE which was due to take place on 14-18^th January 2008. The formal designation of the meeting was the TSG-RAN WG2 #60bis meeting. As soon as it was uploaded, the document was freely available on the internet to anyone anywhere in the world. An email from Janne Peisa of Ericsson announcing the availability of the Ericsson TDoc, which included a hyperlink to the document, was sent to participants in the meeting shortly after the document was uploaded. About an hour after it was uploaded, Mr Leishout who was then employed at Samsung in the Netherlands and was the Chairman of the relevant committee, downloaded it.
ii) Second, the priority document for the patent was filed at the United States Patent Office. This occurred when the date in Europe and the USPTO was 8^th January 2008.

3. The timing of the events can be considered in four different frames of reference, Central European Time (CET), Greenwich Mean Time (GMT), Eastern Standard Time (EST) and the time in Hawaii. CET is the frame of reference of the person who uploaded the document, GMT is the frame of reference applicable on the relevant dates in the country (UK) in which the patent is in force, EST is the frame of reference of the USPTO at which the priority document was filed and Hawaii is the frame of reference chosen by the defendants to make the point that when the document was available on the internet it was available to some people in the world for whom the date was 7^th January 2008. The timings are:



	CET (GMT +1)	GMT	EST (GMT - 5)	Hawaii (GMT - 10)
Ericsson Doc uploaded to ETSI server	8 Jan 08:36	8 Jan 07:36	8 Jan 02:36	7 Jan 21:36
Ericsson Doc downloaded by Mr Lieshout	8 Jan 09:45	8 Jan 08:45	8 Jan 03:45	7 Jan 22:45
Priority Doc filed at USPTO	8 Jan 22:59	8 Jan 21:59	8 Jan 16:59	8 Jan 11:59



4. The defendants argue that in these circumstances the Ericsson TDoc should form part of the state of the art as at 7^th January 2008 and so represents prior art. In their favour, they cite two decisions of EPO divisions. Both decisions relate to very similar factual circumstances, in that they are concerned with email disclosures made as part of the 3GPP standard setting process and patent applications filed at almost the same time.


5. One is a decision of the EPO Examining Division dated 6^th August 2013 relating to a patent application by Huawei Application No. 09 733 661.4. In that case the priority document was filed in China on 5^th November 2008. The time of filing was not stated in the decision. The alleged prior art was sent to the 3GPP email server by a person situated in the US central time zone at 10:54 on 4^thNovember 2008 local time. Considered in the frame of reference of the patent office in which the priority document was filed (China), the email was sent at 00:54 in the morning on 5^th November. In other words the same day in China as the priority document was filed. No doubt in practice the priority document was actually filed some hours afterwards on the 5^th November but one cannot tell.


6. The Examining Division held that the correct approach was to determine the calendar day at the location on which the prior art was available at the respective location. Since the email (and attachment) was available on the 4^th November in the USA, where the server was located, the document was available in the USA on 4^th November, hence one calendar day before the priority date. Therefore it was prior art and the patent application was refused.


7. In that case the applicant Huawei made the same submission that Unwired Planet make here, that the document was not prior art against the patent because looked at in the frame of reference of the office in which the priority document was filed, the document was not prior art. That submission was rejected by the Examining Division.


8. The other case is a decision of the EPO Opposition Division dated 31^st July 2013, concerning Application No. 03 012 734.4 by Innovative Sonic Ltd and opposed by Ericsson. The priority document was filed at the USPTO on 13^th February 2013. The time of filing was not stated in the decision. The alleged prior art was made available by an email to the ETSI server making them available at around 02:02 Central European Time (CET) on 13^th February. Considered in the frame of reference of the patent office in which the priority document was filed (Eastern Standard Time in the USA), the email was available at 20:02 on 12^th February EST. In other words before the day on which the priority document was filed.


9. The Opposition Division considered that the document made available on the ETSI website was prior art and revoked the patent. Their reasoning was that the "controlling time" was the time in the location of the office of first filing, i.e. the USPTO. Thus looked at in EST, the document was available before the priority date. The priority date started in Europe on 13^th February at 6am GMT, which is after 02.02 CET and so the document was prior art.


10. The defendants submit that this case was correctly decided, but do not agree with the "controlling time" reasoning. The defendants submit that the document was prior art because at the point in time it was made available, it was made available all over the world. In some places in the world the calendar day was 12^th February. That date is before 13^th February and so the document is prior art. The fact that when the document was available happens to have been 12^th February in the frame of reference of the patent office at which the priority document was filed is irrelevant.


11. Unwired Planet contend that the Opposition Division decision was right for the reasons it gave and, when those reasons are applied in this case the Ericsson TDoc is not prior art. Unwired Planet contends that the Examining Division decision is wrong.


12. In my judgment Unwired Planet is correct and the defendants' submission of law is wrong for the following reasons.


13. The starting point must be s2(2) of the 1977 Act and Art 54(1) EPC with which it corresponds. The words used in these two texts differ a little but the effect is identical. Paraphrasing them both: the state of the art shall be held to comprise everything made available to the public before the priority date. As Unwired Planet emphasise, these words refer to things made available before a date. The date mentioned is the priority date. There is no reference there to ascribing a calendar date to an item of prior art.


14. There are two questions. First, what is the priority date? Second, was the putative prior art made available to the public before that date? If the prior art was available anywhere in the world before the priority date then it is prior art. However before one can answer the second question, one needs to answer the first one.


15. At any given moment, the time and date around the world are different. Thus it is not meaningful to pretend that a given date has some absolute meaning. It does not. In order to decide if an event took place before it, the priority date has to be based on some frame of reference. The only frame of reference which makes sense is the one at the patent office at which the priority document was filed. Using any other approach would mean that an event which happened after the priority document was filed could count as prior art. That would be a very odd result.


16. Knowledge of the date of filing is what s2(2) and Art 54(2) require. This derives from Art 4A of the Paris Convention, which is the foundation on which the international system of priority is based. A right of priority arises from any regular national filing under the local domestic legislation (Art 4A(1) and (2)). Art 4A(3) defines a regular national filing as any filing adequate to establish the date on which the application was filed. Art 4C (1) and (2) define the priority period as 12 months from the date of filing, with the day of filing not being included in the period.


17. The international system ensures that the date on which a priority document was filed and the office in which it was filed are always known facts. They are all one needs to know in order to establish the priority date but both facts are needed. Nothing in any of these materials requires knowledge of the time at which a priority document was filed. If the law required one to know what date or time it was elsewhere in the world when a priority document was filed, one would need to know the time of filing as well as the date. But the system is not set up that way in general and the EPC and 1977 Act do not require it.


18. Once the priority date is correctly characterised the second question is simply, was the putative prior art made available before that date? That is how the EPO Opposition Division looked at the matter. I agree with their approach.


19. The Examining Division looked at the issue in a different way. It is clear from their reasoning that they were concerned about Art 54(3), i.e. prior unpublished patent applications. They held that it was evident from Art 54(3) EPC that Art 54(2) had to be construed in the sense that if the calendar day of publication of a document is earlier than the calendar day of filing then the document is comprised in the state of the art. That reasoning starts from Art 54(3), which provides:



Additionally, the content of European patent applications as filed, that dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

[Examining Division's emphasis]

20. Hence, the Examining Division reasoned, the filing dates (calendar days) of two patent applications are compared in order to determine which is prior art. They noted that the textbook by Derk Visser (2007 p82-83) came to the same conclusion, that time zones are not taken into account and the only thing which is relevant is the calendar day at the location on which the prior art is available.


21. I recognise that the approach I have applied to Art 54(2) does not sit happily with Art 54(3) but that provision, unlike Art 54(2), expressly refers to the date of filing of the earlier patent application. It seems to me that Art 54(3) requires only a comparison of the dates as they are stated on the face of the documents. The fact that time zones are not relevant under Art 54(3) does not mean they are irrelevant under Art 54(2).


22. By working in the way it does, Art 54(3) creates the possibility that a patent application with a priority document filed later in time that another one could be prior art for the purposes of that article. So a European patent application claiming priority from a Japanese filing which occurred at 8am on the 8^th Japan would have an 8^th January priority date. 8am on the 8^th January in Japan is 6pm on the 7^thJanuary in the USA in the EST time zone of the USPTO. A European patent application claiming priority from a US filing which occurred on hour later, at 7pm on the 7^th January in the USA would have an 7^th January priority date. Assuming the patent offices accept filings at these times, the document based on the later filed priority document would be prior art against the document based on the earlier filed priority document.


23. However Art 54(3) is a deeming provision which deems certain things part of the state of the art even though they were not then made available to the public. Its terms are conditioned by policy considerations different from those on which Art 54(2) is based. Using only dates makes the Art 54(3) system simpler and workable. The risk of unfairness caused by the US/Japanese scenario above is small. There is no reason why the effect of this policy based deeming provision should be transposed into Art 54(2).


24. Unwired Planet referred to the EPO Guidelines (Part G Ch IV-17 para 7.5.6) This states: "If a publication date is close to the relevant priority date, the time zone of publication may be crucial to interpret a publication date". I believe the logic of this observation favours Unwired Planet's argument rather than that of the defendants.


25. The defendants emphasised the justice in their submission given that the Ericsson TDoc was in fact made available to the public before the moment in time that the priority document was filed. However counsel accepted, rightly, that if the law was as the defendants submit it to be, it would catch as prior art things made available to the public at a time after the priority document was filed. The facts in this case flatter the defendants' argument. Consider what would happen if the content of a priority document filed at the Japanese Patent Office early in the morning was then placed on the internet one hour later. It would be available all over the world and at that moment the date in the USA would be the day before. On the defendant's submission this would be prior art because it is to be regarded as having taken place before the priority date. I do not agree.


26. Moreover Unwired Planet is correct that the EPC accepts that a disclosure on the same day as the priority date albeit earlier in time is not prior art. Art 54(2) refers to disclosures before the priority date, not on it.


27. If I apply the law as I have found it to be in this case the answer is clear. The priority document was filed in the USPTO on 8^th January 2008. The frame of reference of the USPTO is the correct one. That is Eastern Standard Time. The Ericsson TDoc was made available to the public at 02.36 8^th January 2008 EST. Therefore it was not made available to the public before the priority date. The fact that this time was 7^th January in some places in the world such as Hawaii is irrelevant.


28. Finally I will say that I reject Unwired Planet's submission that somehow the fact that it seems no one in Hawaii actually downloaded or looked at the document is relevant to anything. The test under Art 54(2) /s2(2) is whether a document is available, not whether it was actually seen or read.