Patent Internet Issues
Internet & computers opened new avenues and modes of communications and doing
about the same time the awesome protection of the patent laws was extended to
"methods of doing business" (MOD).
USPTO and patent practitioners continue to wrestle with the problems of
applying the patent laws' new and nonobvious standards in the MOD field.
Other technical fields have multi-decades of patent
literature in the database, but not so for the MOD field. So the lack of
a practical database of business methods prior art continues to haunt the MOD
The Internet's vast wealth of information has
become a second source of prior art for all technical fields, with one glitch.
The ephemeral nature of "words on the web" can raise some nasty issues
as to the first date of publication. If that date is after an
application's filing date, it is not prior art.
Website Date of Publication Issues, Ex parte Whitemiller, 2001
(Don't Believe Everything You Read!)
Disproving a webpage's ostensible date of
publication, and apportioning the burden of proof, were first-impression issues
considered by the USPTO's Board of Patent Appeals in Ex parte
Whitemiller, Appeal No. 2001-1511, Application Serial No. 09/160,272;
Attorney for applicant, Joan I. Norek.
The patent examiner had rejected all
application claims based on the contents of a webpage that bore the statement
"Updated 1/8/98". If the 1/8/98 date was accurate, the webpage was
published prior to Whitemiller's filing date, and its contents were
fatal prior art against the application.
At the examiner level, evidence submitted on
behalf of the applicant established that (a) the website owner registered to do
business on 10/23/98, (b) the
owner stated he was not yet doing business on the 10/23/98 registration forms, (c) the
website's domain name was registered on 11/10/98, and (d) search engine records of the website
began on 12/8/98.
Obvious odds are that the webpage was not "out there" until
November of 1998, which was nine months after the "updated" claim, and months
after the application filing date.
The examiner nonetheless continued in the claim rejections.
On appeal the Board reversed, holding that (a) the examiner
established a presumption that the 1/8/98 "updated" date was the publication
date, but (b)
the applicant had rebutted the presumption.
Therefore, if a web page's displayed publishing
date is shown to lack credibility, the burden of establishing the actual
publication date returned to the examiner.
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