3.4. Obligation to maintain secrecy
3.4.9 Public availability of documents submitted for standardisation
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In T 202/97 the board held that a draft standard sent together with an agenda to the members of an international standards working party as part of the preparations for a meeting on standards was not normally confidential and was thus available to the public. Even though only a particular group of persons had been invited to take part in the meeting on standards, it was the task of a standards committee to draw up, with the experts in the field, proposals for standards which had been agreed upon, on as broad a basis as possible, and which were based on the current state of developments. This task precluded any obligation to maintain confidentiality.
In ex parte case T 1440/09 the appellant did not contest that D1 had been on the internet before the earliest priority date of the application. D1 was a contribution submitted to the Joint Video Team (JVT) for its 15th meeting in Busan, KR, which took place from several months before the earliest priority date. Furthermore, the board noted that none of the documents on file indicated that contributions to JVT meetings were to be kept confidential even after the meeting in question. The appellant alleged however the confidential nature of D1 based on the understanding that one of the purposes of the "JVT Patent Disclosure Form" was to protect the submitter from its contribution to the JVT meeting being held against its own later patent application. The board stated that the standard, preprinted "JVT Patent Disclosure Form" did not comprise any explicit indication that the technical contribution of the paper it accompanied should be kept confidential. The mere fact that the submitter of contribution D1 might have ticked the box that it was "not aware of any granted, pending or planned patents associated with the technical content of the Recommendation | Standard or Contribution" in point 2.0 of said form did not imply that the contribution D1 was to be kept confidential by any person to whom it was available. The board found that D1 constituted prior art under Art. 54(2) EPC 1973 for the application in the case in hand.
T 738/04 concerned standards institutes too, but confidentiality was in the end not decisive; it is mentioned here because it deals with these institutes' practices.
This question also arises in the context of Art. 83 EPC (see T 1155/12, T 1049/11).
- T 2239/15
A disclosure is regarded as made available to the public if, at the relevant date, it was possible for members of the public to gain knowledge of its contents and there was no bar of confidentiality restricting the use or dissemination of such knowledge (T 877/90).
In the absence of an explicit confidentiality agreement, a bar of confidentiality cannot be seen to have been in place, in the present case. In view of the collaborative nature of the development process and the consensus-building procedure inherent to MPEG, confidentiality could not be guaranteed.
The evidence points to a system designed to guarantee a certain "privacy" of its data while at the same time being sufficiently pragmatic and flexible to allow consultation with other parties in order for it satisfactorily to fulfil its mission.
- Case law 2019
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Case T 2239/15 concerned the public availability of documents (D1/D2) produced during the drafting of standards documents in the framework of the MPEG standardisation processes. The examining division concluded that D1 and D2 formed part of the prior art. The board concurred with the view of the examining division that the subject-matter of claims 1, 18 and 19 was disclosed in both documents. The relevance of contents of D1 and D2 was not questioned but the applicant objected that both were confidential working documents which had been submitted to the MPEG working group by those MPEG members involved in the elaboration of a particular new standard. Various documents regarding the structure of the MPEG group, its working procedures and the conditions of accessibility to the documents it produced were submitted. The board stated that the question of the public availability of documents D1 and D2 was directly linked to the procedures of MPEG when elaborating new standards. The large amount of evidence available in the case in hand allowed for a deeper understanding of the structure and working procedures within MPEG, a Subcommittee of the joint ISO/IEC Technical Committee. The decision also described the kind of documents involved: draft documents ("input documents", also referred to as "m" documents), "output documents" (also referred to as "w" documents), as well as how MPEG committee members should treat documents. In the absence of an explicit confidentiality agreement, a bar of confidentiality could not be seen to have been in place in the case in hand. The working group was small enough to make the explicit signing of confidentiality agreements possible, if "absolute" confidentiality (to keep it strictly limited to this group of members present in the meetings) had been intended. MPEG did not take this route. In view of the collaborative nature of the development process and the consensus-building procedure inherent to MPEG, confidentiality could not be guaranteed. The appellant was not able to demonstrate that the MPEG system could guarantee, or even expect, confidentiality. On the contrary, all evidence pointed to a system designed to guarantee a certain "privacy" of its data while at the same time being sufficiently pragmatic and flexible to allow consultation with other parties in order for it satisfactorily to fulfil its mission (the general idea behind a standardisation body of trying to build a consensus around a standard by wide consultation with interested parties). As a result, D1 and D2 were publicly available at the filing date of the application and the subject-matter of claim 1 lacked novelty.