PCT International Search and Preliminary Examination Guidelines
PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
Chapter 11 Prior Art
Availability of Disclosures to the Public
11.12 A disclosure is regarded as made available to the public if, at the relevant date (see paragraphs 11.02 to 11.05), it was possible for members of the public to gain knowledge from the content of the disclosure, and there was no bar of confidentiality restricting the use or dissemination of knowledge gained thereby. Whether the absence of an index or a catalogue of the disclosure constitutes inaccessibility of the content of the disclosure to the public is determined in accordance with the above principle. Where the disclosure only provides the month or the year, but not the specific date which the disclosure was made available to the public, the content of the disclosure is presumed to have been made available to the public on the last day of that month or that year, respectively, unless evidence is provided to prove otherwise.
Disclosure on the Internet
11.13 Prior art disclosure on the Internet or on an on-line database is considered in the same manner as other forms of disclosure. Information first disclosed on the Internet or on-line database are considered to be publicly available as of the date the disclosure was publicly posted (for Internet disclosures that provide evidence of an earlier disclosure, see paragraph 11.22). When citing an Internet disclosure (content on a web page), problems may arise in establishing the date of publication and whether or not the disclosure has been modified over time. When establishing the publication date of content on a web page, it is important to distinguish between two types of Internet disclosure, viz: those made on the web sites of trusted publishers and those made on web sites of unknown reliability.
Disclosure Made on the Web Sites of Trusted Publishers
11.14 Examples of these are on-line scientific journals (which make available the contents of a paper journal on-line, or may be uniquely on-line publications). The web sites of newspapers, periodicals, television and radio stations will usually fall into this category as well. This type of Internet disclosure gives the publication date of the disclosure which, in the absence of evidence to the contrary, should be taken at face value. The examiner should cite the Internet disclosure in the international search report and use it in the written opinion of the International Searching Authority and in preliminary examination accordingly. The onus is on the applicant to prove otherwise.
11.15 in time to be considered to be state of the art according to Rule 64.1(b) (that is, it is not clear if the disclosure occurred before or after the valid priority date). This may happen, for example, where only the month or year of publication is given and this is the same as the month or year of the valid priority of the international application. In these cases, the Authority may need to make enquiries with the owner of the web site in order to establish the publication date to a sufficient degree of accuracy to know if it is relevant state of the art in accordance with Rule 64.1(b) in the same way as it would act in order to establish a more accurate publication date for a paper published document.
Disclosure Made on Web Sites of Unknown Reliability
11.16 Examples of such web sites include those belonging to private individuals, private organizations (for example, clubs), commercial web sites (for example, advertising) etc. Where such an Internet disclosure is retrieved during the international search and it does not give any explicit indication of the publication date in the text of the disclosure, the Authority may consider using those technical means available to it to attempt to reveal the publication date.
11.17 Such technical means include:
(a) information relating to the publication date embedded in the Internet disclosure itself (date information is sometimes hidden in the programming used to create the web site, but is not visible in the web page as it appears in the browser),
(b) indexing dates given to the web page by search engines (these are usually later than the actual publication date of the disclosure since the search engines usually take some time to index a new web site) and
(c) information available relating to the web site on commercial Internet archiving databases (for example, the "Internet Archive Wayback Machine").
11.18 Where the examiner obtains an electronic document which establishes the publication date for the Internet disclosure, he should make a print-out of this document, which must mention both the URL of the relevant Internet disclosure and the date of publication of that relevant Internet disclosure. The examiner must then cite this print-out in the international search report as an "L" document and cite the relevant Internet disclosure according to the relevance of its content ("X", "Y", "A") and according to the date as established ("X", "Y", "A", "P,X", "P,Y", "P,A", "E", etc.). Where the examiner is unable to establish the publication date of the relevant Internet disclosure and it is relevant to the inventive step and/or novelty of the claimed invention, he should cite it in the international search report with the category "L" for those claims which it would have affected if it were published in time and giving it the date it was printed out as the publication date (see paragraph 16.75(b)).
11.19 Where this type of Internet disclosure does explicitly mention a publication date and this publication date:
(i) is not contradicted by the information sources mentioned above (in this regard it should be noted that the indexing date given by a search engine is usually later than the actual publication date and so where the examiner uncovers an indexing date for an Internet disclosure which is later than the publication date given in the Internet disclosure itself; this does not necessarily mean that the Internet disclosure was made available later than it claimed, it simply means that it was indexed by that search engine after it was made available); and
(ii) is accurate enough to establish if the document was published early enough to be considered relevant according to Rule 33.1(a) and Rule 64.1(b),
then the examiner should trust the date given and give this as the publication date in the search report and use this publication date in preliminary examination. The onus is on the applicant to prove otherwise.
11.20 In the absence of evidence to the contrary, the examiner should assume that the content of the Internet disclosure has not changed over time.
Differences Between Patent and Non-Patent Citations
11.21 As a general rule, no non-patent document is cited in the international search report if the date of publication or public availability of the document concerned is clearly the same as, or later than, the filing date of the international application. However, patent documents published on or after the filing date of the searched application are cited in the search report if the filing or priority date of such published application is earlier than the filing date of the searched application (see paragraph 11.07). Such published patent documents, although cited in the search report, are not considered as prior art for the purposes of Article 33(2) and (3), but are mentioned in the preliminary examination report.
Documents Reproducing an Earlier Disclosure
11.22 Where a document (including video, audio and multimedia representations retrieved from the Internet) reproduces an oral disclosure (for example, public lecture) or a disclosure from a prior use or sale (for example, display at a public exhibition) that was publicly available before the relevant date of the international application , that document should be cited in the international search report with the date that the earlier disclosure was first made publicly available indicated as the date of publication. For a publication on the Internet of an earlier disclosure, the content is considered to be publicly available as of the date of the earlier disclosure if this can be established, for example, by a written reference to the date that a video or audio of a public event was recorded, or an indication of the date of disclosure within the recording itself. If a date of the earlier disclosure cannot be established, that disclosure should be considered to be publicly available as of the date it was posted on the Internet. The content of the oral disclosure or information regarding a prior use or sale where the established date of disclosure is before the relevant date is part of the prior art for purposes of the opinion on novelty and inventive step under Article 33(2) and (3). Attempting to establish the date of the earlier disclosure will therefore be important if the document was published on or after the relevant date of an international application but the earlier disclosure referred to in the document took place before the relevant date. The written opinion and international preliminary examination report also call attention to such non-written disclosure in the manner provided for in Rule 70.9.