The 33rd MARQUES Annual Conference is taking place in Dublin, Ireland this week and this morning featured a session dedicated to evidence of disclosure in design law. As moderator Mikas Miniotas of AAA Legal Services in Estonia explained, this is a complex and evolving question in design invalidity cases, especially where the supposed disclosure took place on the internet. Guidance for design practitioners is available from General Court case law and the new Convergence Programme 10, and EPO practice on patents also provides some useful lessons.

Recent cases and pending issues

Arnaud Folliard-Monguiral, Team Leader, Litigation, ICLAD, EUIPO provided a perspective on disclosure on the internet in registered Community design cases, including an overview of General Court case law, pending issues and an introduction to Convergence Programme 10.

Articles 7 and 11 of the EU Designs Regulation govern what constitutes a disclosure, and these have been addressed in several General Court cases, such as:

• Case for mobile phone: the Board of Appeal found that one item of evidence from an online platform did not have probative value because representation of the design was lacking, but the General Court annulled this finding. It also said that an e-mail containing informative documents could not be classified as confidential.
• Lattice: The General Court said that disclosure of small and poor-quality photos can be corroborated by better photos in an undated catalogue.
• Crocs: Addressing the exception to disclosure, the Court said the correct test is whether it was not actually possible for professionals to be aware of the events constituting disclosure. A design cannot be deemed to be known in the normal course of business if the specialised circles can become aware of it only by chance. It also confirmed that there is no quantitative threshold with regard to actual knowledge of the disclosure events.

Pending issues Arnaud highlighted included: disclosure on pay-to-access websites or those with password protection or file-sharing systems; searchability of the disclosure by keywords relating to the content of the design (an issue that arose in the Crocs case); disclosure by email to one specific recipient; and the time during which the URL remained accessible.

“Some of these issues, and many others, were considered in the context of CP10, which was a project launched two years ago,” said Arnaud. “We have agreed on a final text, which will be presented to the Liaison Meeting on Designs in October this year and will be formally endorsed in November.”

CP10 provides recommendations regarding different types of disclosures on the internet, including the desirability of using a timestamp and to timestamp the entire browsing session, the advisability of including reviews left by users and using a unique code linking information on the internet with other evidence.

The EPO approach

“We don’t know what the internet looks like. Nobody has a good overview of what’s on the internet,” said David Brophy of FRKelly in Ireland. “A lot of stuff out there is not on any catalogue or master list.” That makes it even harder to find what was on the internet in the past, he added.

He said the EPO has been looking at this issue in patent law for about 15 years, and has identified what is good and bad evidence. Good evidence includes: the Wayback Machine, reputable journals, traditional media and Wikipedia. Beyond those sources, said David, “we have to be much more careful.” Forums such as StackExchange that host posts and comments may be acceptable in evidence, though it’s important to remember that policies on dating and editing can change. The level of proof used at the EPO is the balance of probabilities taking into account the totality of the evidence.

Less trustworthy sources include Google search, where dating can be unreliable; short-lived disclosures; and documents hidden in public sight such as those posted on Google Drive but where the URL has not been shared. From a patent law point of view, it is irrelevant if the language is unfamiliar, if there is geoblocking or paywalls or if there is no evidence of actual access, as the relevant person is fictional.

How do companies deal with these issues on a day-to-day basis? That was the question addressed by Amelle Benabdellaziz of JT International in Switzerland, who said that her company is investing more and more in designs. Avoiding inadvertent disclosure requires close collaboration with designers, early filing and monitoring of social media. During the discussion, the speakers addressed topics including the potential usefulness of Blockchain-based tools in tracking disclosure.

The Annual Conference is taking place until Friday. For more updates, view the posts on the MARQUES Class 46 blog and follow #marques19 on Twitter.