Common General Knowledge in the Age of the Internet

M. M. Fischer (DE), German and European Patent Attorney

While the Boards of Appeal have rendered over the last years a series of decisions that define when an Internet publication is considered to be part of the prior art (and the Guidelines have been continuously updated), there do not appear to be any decisions that adapt the common general knowledge (CGK) to information that the skilled person does not have in his mind but is easily retrievable for him via the Internet. The situation is different in the UK in which decisions have been rendered that extend in the assessment of inventive step the common general knowledge to such information. The author of this article suggests that this should also apply in the assessment of sufficiency of disclosure.

Mr Justice Sales argued in Teva UK Limited & Anor v AstraZeneca AB [2014] EWHC 2873 (Pat):

"The authorities indicate that CGK includes not just information directly in the mind of the n o t i o n a l skilled person, but such information as he would be able to locate by reference to well-known textbooks. This guidance needs to be adapted and kept appropriately up to date for the procedures for dissemination of scientific knowledge in the age of the Internet and digital databases of journal articles. Searches of such databases are part and parcel of the routine sharing of information in the scientific community and are an ordinary research technique. In my view, if there is a sufficient basis (as here) in the background CGK relating to a particular issue to make it obvious to the unimaginative and uninventive skilled person that there is likely to be - not merely a speculative possibility that there may be - relevant published material bearing directly on that issue which would be identified by such a search, the relevant CGK will include material that would readily be identified by such a search."

This passage has even been incorporated into the UK Manual of Patent Practice[1] and therefore does not seem to be an outlier decision. Currently, there is no corresponding decision from the Boards of Appeal. However, it is encouraging to see that the EPO seems to be aware of this case law and wants to turn our attention to it since it published in "Case Law from the Contracting States"[2] a summary of the following decision "Patents Court, 12 May 2016 - GlaxoSmithKline UK Ltd v Wyeth Holdings LLC [2016] EWHC 1045 (Ch)" which confirms the findings made in the passage cited above.

At issue was Wyeth's European patent (UK) 2 343 308. Henry Carr J referred to the legal principles in respect of common general knowledge set out by Arnold J in KCI Licensing v Smith & Nephew [2010] EWHC 1487 (Pat), and approved by the Court of Appeal at [2010] EWCA Civ 1260. He then referred to the passage cited above from the judgment of Sales J in Teva v AstraZeneca [2014] EWHC 2873 (Pat). Henry Carr J agreed with this analysis. This passage did not mean that all material available online constitutes common general knowledge. Rather it indicated that material which the skilled addressee knows to be available online and which is generally accepted as a good basis for further action (such as material which might be found offline in a textbook or a key journal article) may constitute common general knowledge.

It should be mentioned that the first decision mentioned above has already received a lot of attention by its incorporation into the Manual of Patent Practice and has been discussed in several Internet blogs[3]. However, the decisions above fail to say anything regarding the common general knowledge when assessing sufficiency of disclosure (Art. 83 EPC). Let us recall:

"Although the skilled person for the purpose of Art. 56 and Art. 83 has the same level of skill, the knowledge for both purposes is different (T60/89). The skilled person when assessing inventive step is aware of the common general knowledge in the art at the relevant date and has all prior art in the relevant technical field at his disposal (G-VII, 3). The skilled person when assessing sufficiency of disclosure of a patent has knowledge of the invention as disclosed, i.e. knowledge of both the prior art, the problem and its solution, and is aware of documents cited in the patent and the common general knowledge in the art (T 6/84, T 171/84)."[4]

While the common general knowledge was adduced in the decisions above for the assessment of inventive step, the author of this article is of the opinion that the findings above should be applied a fortiori when common general knowledge is adduced in the assessment of sufficiency of disclosure because in this case the skilled person even knows the solution (the wording of the claim) to the problem. In such a case, the skilled person may particularly easily find out how to carry out the invention by entering e.g. method steps of terms of the claim in a search engine to find pertinent information that allows him to carry out the invention.

The basic principle set forth in T 206/83 (cited by 59 subsequent decisions) says that "Information which can only be obtained after a comprehensive search is not to be regarded as part of common general knowledge." This principle is still valid today. But information that could only be found using a comprehensive (and cumbersome) search before the age of the Internet can easily be found nowadays in the age of the Internet. Should the description not disclose how, for example, a step in a method is to be performed or if an uncommon expression of a claim is not defined in the description, but the skilled person could have found out easily via an Internet search before the priority/filing date how to perform this step or the meaning of the expression, then the information obtained by the Internet search should also be considered to be part of the common general knowledge or (if we do not want to extend the definition of common general knowledge as it currently is) at least to be information that was readily available to the skilled person before the priority/filing date and that can be adduced for the requirement of Art. 83 EPC. Of course, the problem remains that is has to be proven that this information was indeed readily available over the Internet before the priority/filing date (and that the skilled person was aware of that) which may, as the circumstances require, not be an easy task.

Since the author of this article basically agrees with the findings made in the two decisions from the UK cited above, he encourages professional representatives to submit corresponding arguments - be it within the discussion of inventive step or sufficiency of disclosure - before the Boards of Appeal to see if the Boards of Appeal follow the path taken by the UK.

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  2. Supplementary publication 6, Official Journal 2017, Case Law from the Contracting States to the EPC
  4. Visser, D., "The Annotated European Patent Convention", 24th edition, H. Tel, Publisher B.V., p. 178