The Dirty Details of Disclosure: Navigating the Fine Line Between Prior Art and Public Good in British Patent Law

The Dirty Details of Disclosure: Navigating the Fine Line Between Prior Art and Public Good in British Patent Law

Mekhala Chaubal is a JD candidate at Osgoode Hall Law School.

On 27 July 2011, Mr. Justice Arnold of the Patents Court Division of the High Court of England and Wales, by refusing to grant a summary judgment to the plaintiffs in LG Electronics v Sony Europe Ltd & Others (“LG Electronics”) opened the door to what might be a novel interpretation of the ideas of disclosure and prior art in British patent law.

LG Electronics involved a dispute between the two parties regarding the infringement of three patents concerning Blu-Ray technology. The plaintiff, LG Electronics, was primarily interested in obtaining a summary judgment in relation to the matter. The defendants, Sony Europe Inc., contested that all three of the patents that LG was claiming in this case were invalid on the grounds of disclosure constituting prior art. To prove this, Sony cited a document—DVD Specification for Read-Only Disc - Part 3: Video Specifications, Version 1.1 (“DVD Specification”) outlining the specifics of the Blu-Ray technology that LG was seeking protection for, and pointed out that the document was in possession of the DVD Format/Logo Licensing Corporation (DVD FLLC) since 1997.

The DVD FLLC is a company based in Tokyo, Japan that focuses on the production, maintenance, verification and policing of DVD logos, and Sony’s defense was based on the fact that LG’s release of DVD Specification to the DVD FLLC fell within the realm of prior art. LG’s defense however, turned on the consideration that the document was released to the DVD FLLC under specific terms of confidentiality. Interested parties were then required to pay a fee to DVD FLLC, as well as sign an agreement of non-disclosure to gain access to the document, the information from which was restricted for use in the field of Blu-Ray DVD development as outlined in the document. In refusing to give a summary judgment, Justice Arnold considered that while LG’s efforts at protection of its invention, i.e. the imposition of confidentiality terms on disclosure, probably did not constitute prior art, Sony’s counterclaims that the document could have been made available to all interested persons might also have been valid, and a full trial was needed to determine an accurate outcome of the case.

Section 2(2) of the UK Patents Act outlines the criteria for prior art that could invalidate a patent, namely any information provided to the public before a patent’s priority date, and also states that this knowledge can be through “written or oral description, by use on in any other way.” LG’s assertion then, that the confidentiality aspect it imposed on the disclosure of DVD Specification was sufficient to preserve the novelty of the invention implies a ‘disclosure in degrees’ approach. Both the European Patent Office and the UK’s Intellectual Property Office have disclosure strategies and policies intended to preserve the balance between best mode disclosure and the invention’s novelty. However, LG Electronics speaks to the possible willingness of the British courts to consider the desire and ability of inventors to place their own terms on a disclosure agreement. In the UK at least, it appears that the scales tip alternately towards either side on a case-by-case basis. While it was hoped that LG Electronics could have provided a definitive direction, the case was ultimately settled by both parties in August 2011, leaving the British courts in the same quandary as before.

In Canada, sections 28(2) and 28(3) of the Patent Act deal with the provisions of prior art and disclosure, similar to the British ones mentioned above. Jeremy de Beer’s article outlines the inconsistencies in disclosure obligation policy in Canada, especially noting the Supreme Court’s hesitation to get involved, leaving inventors to their own means to balance their interests with those of the public, while staying within the Canadian Intellectual Property Office’s guidelines. It seems as though Canada is sorely in need of a LG Electronics-like litigation opportunity to force the courts to finally take a stand on the subject.