Cabinet Netter proves design patent valid after disputing Wayback Machine evidence

Cabinet Netter has successfully challenged the Japan Patent Office after it questioned the novelty of a filed design patent, belonging to Ascendance Flight Technologies, which covers a new hybrid aeroplane.

Using evidence from online internet archive the Wayback Machine, the Japan Patent Office said the patent was not novel based on the alleged filing date. However, the office did not respond to JUVE Patent’s request for comment.

While there is currently little or no enshrined case law regarding the use of internet archives for evidence of novelty or proof of disclosure, some patent offices have issued guidelines concerning how examiners should approach resources such as the Wayback Machine. Furthermore, information found in such online archives, for example patent filing dates, are rarely disputed.

Neither the European Patent Office, nor Wayback Machine representatives, responded to JUVE Patent’s request for comment.

An image standard of proof

The website web.archive.org, otherwise known as the ‘Wayback Machine’, hosts snapshots of all websites that have existed on the internet until the present day. Patent offices can use the database as proof of evidence of disclosure, for example when the would-be patented content was first made publicly available. A patent office search report might highlight a previous filing, which is relied upon as a standard of proof.

Some global patent offices have issued guidelines on how examiners can approach the internet as an archival source. A ‘Study on the admissibility of internet information as legitimate disclosure for novelty examinations‘, carried out by five global patent offices, highlights how the Wayback Machine and other internet-archiving services can help in establishing the date of disclosure. Nevertheless, the study says, “their limitations should also be taken into account”.

In this instance, a flaw in the website’s image storage meant patent attorney firm Cabinet Netter could determine that the archived filing date of the invalidated Ascendance Flight Technologies design patent was false. As a result, the firm succeeded in getting the Japan Patent Office to reissue the design patent.

Cabinet Netter proves false image

In 2021, Cabinet Netter filed a design patent application at the Japan Patent Office for Toulouse-based client Ascendance Flight Technologies, which covers a new design of hybrid aeroplane that mixes batteries with turbines to create electricity. The plane is able to carry out this process while in flight.

In 2022, the patent attorney firm then filed an extension to the design patent JT 2022-01041. However, the Japan Patent Office disputed the patent’s validity based on lack of novelty, filing its first office action in October 2022. The office said that, based on its own website resources, the design patent was not novel. It based its evidence on an image held by web.archive.org, which the JPO asserted Ascendance Flight Technologies had disclosed prior to filing, based on an archival snapshot of said website.

Using the time code of the archive’s snapshot image of the design patent, as well as the virtual URL for the website, Cabinet Netter could prove that the Wayback Machine held an image containing false code, which loaded another image from another date.

Crawling back through

While the EPO was not involved in this case, according to EPO guidelines, “It is well-recognised policy of the Internet Archive’s Wayback Machine to crawl the internet and archive crawled web pages using the date and time when the web page was crawled as part of the URL”. Thus, the Japan Patent Office relied on a snapshot of the time code which the URL had stored.

In this instance, however, Cabinet Netter demonstrated that the stored Japan Patent Office image held a false source code. It could prove that some of the images displayed by the Wayback Machine had a code which loaded another image from another date. Thus, when the office referenced a previous version of the filed design patent, Cabinet Netter could show that it did not prove the alleged filing date.

Way back in 2022

Ultimately, the patent attorney firm showed the Japan Patent Office that it itself had the correct source code of the resource which the site should display, proving that the design patent’s true filing date did not match what the archive had stored. Finally, in January 2023, after filing a series of affidavits to the Japan Patent Office, Cabinet Netter was able to prove the correct chain of image creation.

The EPO has utilised the Wayback Machine as an internet archive resource to prove certain points of novelty, including in  T 523/13, T 545/08, and T 884/18. For example, in T 884/18, the boards in question used the enhanced picture quality of the images stored in the Wayback Machine, rather than in the submitted copies, to establish that a person skilled in the art would recognise marks as stitches to close a loop. As a result, examiners revoked the patent pursuant to Article 101(3)(b) of the European Patent Convention.

Proof via public access

While the Japan Patent Office did not want to comment on the current proceedings, it did provide JUVE Patent with its guidelines for examining novelty and creativity in patents. In particular, the office highlighted Article 3, paragraph (1), item (ii) and Article 3, paragraph (2), where information is “Described in a distributed publication” or “Made publicly available through an electric telecommunication line”.

Jérémie Palacci

The requirements go on to note that “electric communication line” means posted on a webpage available for unspecified persons to view via electric telecommunication lines. In other words, if accessible and unrestricted information is posted on the internet, then it can be used as the basis for determination of novelty.

According to JUVE Patent sources, the French patent courts also sometimes rely on the Wayback Machine in determining cases of novelty or proof of disclosure. However, like the EPO and the Japan Patent Office, there is no existing enshrined case law which cements internet archives as an irrefutable standard of proof.

Over to Japan

Cabinet Netter has worked for Ascendance Flight Technologies since 2020, with the firm originally filing the European design model in 2021. The design patent was filed in May 2022. Partner Jérémie Palacci, who has specific experience in working on patents in the engineering field, leads for the company. Aurore Simon Druon, who is a partner and also head of trademarks, handled the design patent.

In Japan, Cabinet Netter instructed Tokyo-based patent attorney firm Aoyama & Partners to handle the case before the Japan Patent Office. Partner Masaharu Ohtsuka, who specialises in mechanical and design patents, was the firm’s lead representative.

For Ascendance Flight Technologies
Cabinet Netter (Paris): Jérémie Palacci, Aurore Simon Druon (both partners)
Aoyama & Partners (Tokyo): Masaharu Ohtsuka (partner)