Rules for inclusion in the prior art of sources published on the Internet

In accordance with paragraph 2 of Article 1350 of the Civil Code, an invention is new if it is not known from the state of the art. The state of the art includes any information that became public knowledge in the world prior to the priority date of the invention. Thus, in essence, the state of the art is published information about similar technical solutions, which became known to a wide range of people before the filing of an application for an invention with the Patent Office.

The only exception is information disclosed by the same author during the period of the "author's privilege", i.e. no more than six months before the date of application.

The search and analysis of the state of the art is a key tool for a specialist in the field of intellectual property protection or an author-developer to check the patentability of the proposed solution for the purpose of its further patenting or, conversely, the annulment of a valid patent, but issued, in his opinion, is not lawful.

As a rule, the “prior art” section of the description of a patent application includes patent sources of information that are analyzed for the shortcomings of previously patented solutions, then the advantages of a new improved solution proposed for protection are highlighted by revealing the impact of its distinctive features on an unexpected technical result (positive effect). However, if the object of patenting is absolutely new and practically claims the status of “discovery”, then in this case there may be no “prior art” at all. True, at present such situations are extremely rare.

Let us ask ourselves a question: what other sources of information can be taken into account as information included in the prior art for analysis in terms of establishing the novelty and inventive step of a technical solution, taking into account the realities of the development of modern information technologies, the Internet, including social networks.

Since information must be publicly available in the world to be included in the state of the art, it does not matter at all in the print media whether this information is published or voiced in the media (on radio, television), presented at a professional exhibition or posted on a website, in an open feed or social network of a particular user.

In order to clearly understand what information and from what date can be considered publicly available, the patent law provides for a rule that determines which date must be taken into account depending on the type of information source, according to which the information contained in the source of information with which any person can see.

So, the date that determines the inclusion of the source of information in the prior art is the date on which the source of information became publicly available.

The date of inclusion in the state of the art of published patent documents (patents or other protection documents, as well as applications for obtaining patents or other protection documents) is the date of publication indicated on them.

The date of inclusion in the prior art of other sources of information that are not patent documents in accordance with the second paragraph of this clause, messages published in electronic form on the Internet information and telecommunication network is the date of their placement on the Internet, as a result of which any a person can get acquainted with them if it can be documented or is automatically added to the document (message), and if it is impossible to establish this date - one of the available:

• the date on which documents (messages) were archived by archiving services;
• date of saving copies of documents (messages) in search engines;
• the date when the content of documents (messages) was changed, automatically entered by the version control systems of the file or web page on which the corresponding content became available.

Documentary confirmation of the date of placement on the Internet of online versions of periodicals or continuing publications, articles, messages on sites on the Internet of periodicals or continuing publications, television and radio stations indicated on them is not required.

The date of inclusion in the prior art of documents (messages) published in the form of an electronic edition on optical discs is the date of signing for use, in its absence, the date of recording the last session on an optical disc, and if the last session cannot be established, the last day of the month or December 31 of the specified in the edition of the year, if the time of issue is determined by the month or year, respectively.

The date of inclusion in the prior art of documents (messages) published on paper is:

• for domestic printed publications and printed publications of the USSR - the date of signing for publication indicated on them;
• for domestic printed publications and printed publications of the USSR, which do not indicate the date of signing for printing, as well as for other printed publications - the date of their issue, and if it is impossible to establish it - the last day of the month or December 31 of the year indicated in the publication, if the time release is determined by the month or year, respectively;
• for deposited manuscripts of articles, reviews, monographs and other materials - the date of their deposit;
• for reports on research work, explanatory notes to development work and other design, technological and project documentation located in the bodies of scientific and technical information, the date of their receipt by these bodies;
• for draft technical regulations, national standards of the Russian Federation, state standards of the Russian Federation - the date of publication of the notice of their development or the completion of their public discussion, or the date of publication of the draft;
• for technical regulations, national standards of the Russian Federation, state standards of the Russian Federation - the date of their official publication;
• for technical conditions, industry standards, enterprise standards, standards of organizations, standards of scientific and technical engineering societies and other public associations with which familiarization is possible - a documented date from which such familiarization became possible;
• for sanitary and epidemiological conclusions (hygienic certificates) - the date of entry in the relevant register of sanitary and epidemiological conclusions;
• for materials of dissertations and abstracts of dissertations published as a manuscript, - the date of their receipt by the library.

The date of inclusion in the prior art of sources of information that have become publicly available both in electronic form and on paper, for example, dissertations and abstracts of dissertations, is the earliest date on which the source became publicly available, provided that the content of the information source in both of these types is identical.

The date of inclusion in the prior art of other sources of information is:

• for works accepted for the competition - the date of their laying out for review, confirmed by documents related to the competition;
• for visually perceived sources of information (posters, models, products, and others) - a documented date from which it became possible to view them;
• for exhibits placed at the exhibition - a documented date of the beginning of their display;
• for oral presentations, lectures, speeches - the date of the report, lecture, speech, if they are recorded on the storage medium;
• for messages on radio, television, in the cinema - the date of such a message, if it is recorded on the appropriate information carrier on the specified date;
• for information about the technical means that became known as a result of its use - a documented date from which this information became publicly available.

As part of a non-standard situation, we will analyze a case from practice that has developed in relation to the source of information opposed in the objection to the validity of a patent for an invention on the non-compliance with the condition of patentability "novelty", which is information from the Internet, namely 8 months before the filing of the application by the author invention, a post was published with a description and design drawing of the device patented by him on the Instagram.

With regard to the web resource Instagram, it should be noted that this social network was officially blocked in Russia at the request of the Prosecutor General's Office, since on 10/11/2022 the Meta company was recognized in Russia as an extremist organization, and therefore today it is not possible to verify the content of the published information in the Russian Federation.

However, for the period of publication (2019), there was no such problem, and therefore the source can be recognized as publicly available on the specified date, provided that the accuracy of the information provided on the submitted copy of the pages from the site is confirmed by drawing up a notarial protocol of the site by a notary of the country where this the social network is not blocked (for example, by a notary in Kazakhstan).

Thus, we can conclude that any user of this resource had a fundamental opportunity to get acquainted with the content of the post and the drawing, from the date of their publication on the specified web resource. Therefore, information known from this source of information can be included in the information that became publicly available before the priority date of the invention under the contested patent, to assess its patentability, since the device described in the post is for the same purpose, and the drawing is identical to the figure presented in the contested patent, and the information was published more than 6 months before the priority date of the disputed utility model.

Therefore, subject to the submission of a notarized protocol of site inspection by a notary of a country where there is no blocking of Instagram, it is possible to prepare and file an objection against the grant of a patent for an invention on the basis of its non-compliance with the patentability condition “novelty” to the Chamber of Patent Disputes.