© John R.S. Orange 1994 All rights reserved
Sim & McBurney , Toronto, Canada
TABLE OF CONTENTS
I. Introduction
II. Background
III. Practical Considerations
A. Equipment
B. Geographic Imbalance
C. Representation before the Patent Office
D. Processing Time
E. Increased Initial Cost
F. Office Management Systems
IV. Liability
A. Non Receipt
B. Errors in Transmittal
V. Evidentiary Issues
VI. Summary
I. INTRODUCTION
Electronic patent filing, the ability to file documents in the Patent Office in electronic form, promises great benefits, particularly to the futurist. We can all probably view with a warm glow the prospect of sitting at our desks finalizing a patent application and, with the touch of one key, sending that application off over the telephone wires to the Patent Office, secure in the knowledge that the application has now been filed without bothering our secretary or worrying about forms, cheques and the like. That, of course, is idealistic and the question that I would like to address today is not so much whether electronic filing will ever be realized because frankly that is a fait accompli, but rather what hurdles stand in the way of Utopia.
This article is not about the technical aspects of electronic patent filing systems - the bits, bytes, CPUs and other wonderful devices. Instead, what this article aims to do is identify concerns that are presented to the patent profession with the adoption of electronic patent filing, and suggest areas in which co-operation between the profession and the respective Patent Offices can perhaps smooth the way to electronic patent filing systems for the benefit of everyone.
There are three particular areas to be considered:
a) the practical aspects of conducting day-to-day business using these systems;
b) the liabilities that arise from the use of these systems; and
c) the evidentiary problems that may be created by implementing these systems.
II. BACKGROUND
As an introduction, it may be useful to provide a brief, non-technical summary of the technology involved in electronic patent filing systems, including its history and its future as presently contemplated.
In simplest terms, electronic patent filing consists of substituting an electronic form of a patent application (or any other document related to the prosecution of the patent application) for a paper copy. The electronic form may be a floppy disk or a transmission through on-line communication. In practice, the process consists of several further elements.
In the typical system, the patent documents (including any drawings, mathematical equations, tables and chemical formulae) are either created in digital format by the means of word processing and drafting software, or are converted into digital format by an optical scanner. In some cases, a Patent Office will require an application form which the patent agent creates by using a custom software program. Special software in the patent agent's computer will check the documents to be filed for obvious format errors and then prepare the documents for filing with the Patent Office. At this point, the document can either be saved onto a floppy disk which can then be forwarded to the Patent Office or the document can be transmitted directly by on-line communication to the Patent Office.
When the document is received by the Patent Office, the Patent Office computer checks the document again for obvious format errors and sends proof of filing to the patent agent. At that point, the document is forwarded electronically to the appropriate department within the Patent Office where it will be examined in due course.
At present, Japan is the only country that has a working electronic patent filing system in place. The first of the three stages in the implementation of the electronic patent filing system in Japan began on December 1, 1990 and since that time it has been possible to file an electronic patent application with the Japanese Patent Office (JPO). This procedure has been widely adopted by the profession despite a significant capital cost. The JPO does, however, offer a reduced filing fee for those using the electronic medium. They also have a brand new office building to accomodate the new system. In the second stage, the Examiner will carry out examination of the patent application on a special computer terminal. The terminal will allow the Examiner access to the electronic "file wrapper", technical literature and patent databases. In the third and final stage, all publications related to patents will be in electronic form and accessible to the profession and eventually the public.
Electronic filing does already exist in one branch of our profession with the PATENTIN program used to list gene sequences in biotech applications. I have previously criticized this program on the basis of observations of it in use, and drew a rebuke from the EPO for my trouble. It is a fact, however, that there are two types of programs (a US program and an EPO program); they take a significant disk space so that equipment has to be upgraded; they are not particularly user-friendly when it comes to editing; and they do not meet the practical parameters of some not untypical applications. It is also evident that a reasonable training has to be given to the user of the program if all its benefits are to be realized.
In late 1992, the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO) began joint development of an electronic patent filing system which will enable applicants to prepare European, U.S. and International PCT patent applications in electronic form. EASY (Electronic Application System) is being developed in stages that will eventually lead to an on-line patent filing system. Testing for the EASY system will likely begin in the second half of 1994.
Although the EASY project is being developed for all three offices, each appears to be taking a different approach to its implementation. The USPTO will test the program internally on selected files and satisfy itself that the system works. The EPO and WIPO are implementing the system with the co-operation of selected test sites, gradually increasing the number of sites as the program develops. Even here, however, there is a divergence of view. The EPO will expect to receive the application on a floppy disk alone; WIPO will ask for a paper copy as well as a floppy. The reason for this is quite simple. Not all of the PCT countries are able to utilize the electronic format and so a paper copy is still required. It is also, I believe, a more conservative approach and permits testing on a broader base with less risk.
EASY will be developed progressively and will consist initially of a program that allows data to be entered on a form presented on the screen to complete the application documents. Internal checks will ensure that the data is correctly entered and that there are no inconsistencies. For example, it will ensure that where the U.S. is designated in a PCT application, the inventor's name is identified as applicant for that country.
This electronic application form will then be appended to the disk containing the specification and sent to the respective Patent Office.
The next stage would involve the conversion of the diskette provided by the applicant into an ASCII format within the Patent Office.
Once this has been proven, then the next stage will require conversion into ASCII by the applicant before transmission to the Patent Office.
Finally, full on-line filing directly to the Patent Office will be implemented.
The EPO is to begin beta tests in February or March of 1994 using 10 applicants; would include 10 more the following month; and is expected to have 70 or 80 users by July 1994. These tests will require a paper copy backup although the diskette would be considered the accurate copy if there was any discrepancy. Stage 3, conversion by the applicant, would be implemented by 1994 and Stage 4, full on-line filing, by 1995.
Several factors are said to guide the development of EASY. First, it is being designed as a modular and open software product that will be easily adaptable to the different national Offices; the basic EASY software product would be used as a starting point for the different national electronic patent systems and make them compatible. Second, it is intended that EASY will be an easy software product for applicants to learn and use. The USPTO, EPO and WIPO are conferring with the various national patent Offices and professions in order to ensure the system will be useful for all concerned. Third, compatibility is a top priority. More on this later. In addition, the technical specification for EASY files will be made public so as to encourage the development of third party software and hardware.
In Canada, an automated patent document imaging system is being developed. The Canadian Patent Office (CPO) will continue to accept patent documents in paper form but upon receipt, the documents will be scanned using an optical scanner, indexed and stored in a database. The scanned documents are then accessible to the CPO's Examiners who will examine patent applications on a computer work-station. The system will also provide authorized external access. While not a true electronic filing system, the CPO intends its system to be compatible with EASY.
Electronic patent filing systems are therefore a fact of life and have to be dealt with.
III. PRACTICAL CONSIDERATIONS
1. Equipment
In considering this topic, it is perhaps worth remembering the origins of the move to electronic patent filing systems. Most of the Patent Offices around the world are faced with a flood of paper and as patent activity increases, so does the pile of paper they have to handle. The movement of paper files through the various systems in the Patent Office is expensive, labour-intensive, and essentially an information transfer process. Computers are excellent machines for moving information among different locations and for readily retrieving information. It is obvious, therefore, that Patent Offices can receive significant benefits from the use of paperless systems and it is only natural that they should look to adopt them.
An organization the size of a Patent Office can afford to customize its system and use equipment that is optimum for the task at hand. Its concern is the efficiency of transferring paper within the Office and maximizing the benefit to that organization. Electronic patent filing systems therefore are driven by Patent Office requirements and perhaps only in small part by the requirements of the clients of the Patent Office - that is, the patent profession.
First, there is the question of the technology that will be used to implement an electronic patent filing system. Most patent professionals today utilize some form of electronic word processing. However, there is undoubtedly a broad range of computer equipment, systems and software being used for this task. An electronic patent filing system therefore ideally should be compatible with these various types of computer hardware and software. Unfortunately, it is not likely that a Patent Office's hardware and software are comparable to that used in a typical business office. There will therefore always be some compatibility problems.
The question then becomes how would the profession be able to access such a system and would they be required to utilize custom hardware or software to submit documents to the Patent Office. For the average firm of patent practitioners, it would be impractical to have a single work station for processing Patent Office documents and ideally every secretary should have a work station. If, however, these work stations are expensive or have software that is peculiar to this particular operation, then the real cost to the practitioner will be very high.
The costs will be high in two respects. First, the equipment undoubtedly will need to be powerful and consequently modestly expensive. Providing the proper equipment for the secretaries in the firm could involve a significant outlay of capital for which the return will not be realized for many, many years. Secondly, the Patent Office will likely require the use of some type of custom software. This then introduces a learning curve for which undoubtedly the patent profession will have to pay.
You will recall that one of the aims of EASY was to be compatible with other systems. So it is, if you use certain equipment. EASY is a DOS-based program; no MAC version is being developed. It is also a WINDOWS program. It will also, at least initially, accept input only in either the latest version of WordPerfect or WORD format. If your system does not satisfy these criteria, you cannot use it directly. Reformatting your text files is probably not too difficult but I am not sure what you do about the EASY program itself.
To put this in context, I would like to quote from the briefing notes prepared for a SACEPO (Standing Advisory Committee before the European Patent Office) meeting set for March 10-11, 1994. It states:
"Applicant will not be required to purchase specific computer hardware to use EASY".
This is of course true if you already have the latest version of WordPerfect running on Windows in your office.
The Canadian proposal does not of course limit the equipment used to prepare a document. It just needs a legible document.
B. Geographical Imbalance
A further issue that flows from the particulars of implementation of an electronic patent filing system is the concept of geographical imbalance - that is, the disproportionate amount of work attracted by patent practitioners who are located close to a Patent Office.
This is a real problem in Europe where the centralization of work in Munich and the U.K. has placed severe strains on the profession in countries such as Spain and the Netherlands. Canada has avoided this problem by maintaining its local filing centres and by situating the Patent Office in one of the harsher climatic zones, beautiful though it is.
On the one hand, it could be argued that electronic filing should counteract this trend since physical location should not affect the ability to file documents electronically. In reality, however, a patent document will probably include graphics - that is, drawings - and in order to send graphic material, a high bandwidth data bus is required. Conventional telephone lines will not handle efficiently transmission of graphic files, at least not at a reasonable speed or cost. Access to a high quality data bus, often being referred to as an information superhighway, is therefore required if you want to have reasonable access to the Patent Office. For those in more remote areas, the information superhighway may not reach them for many years.
The cost of actually sending a document to the Patent Office would also depend upon the telephone cost incurred. In the case of the EPO, a practitioner operating in Munich could file an application at minimal cost whereas a practitioner in Spain, for example, would have significant long-distance telephone charges associated with each filing. The Spanish practitioner must therefore either be more expensive or less profitable than its Munich counterpart and both options bias the balance toward the local practitioner. A similar situation exists in Canada of course with incremental costs between Vancouver and Toronto.
Clearly, the solution lies in establishing nodes on the information superhighway. These nodes, presumably located at main cities, would allow the patent professional access by simply making a local telephone call which in North America would not incur charges. The feasibility of this in Europe where local calls do incur charges would have to be investigated. In any event, the use of nodes would greatly foster equal access wherever implemented. I am told that this is the intent within Canada.
C. Representation before the Patent Offices
Continuing with the theme of geographical imbalance, consideration will also have to be given to how accessible the Patent Offices will become to practitioners on an international level. Can one, for example, file directly in the EPO from Canada, or vice versa, and secure filing dates, simply by logging onto the EPO telephone line? Will someone have been appointed agent of record in a case where an associate has filed directly into a Patent Office and has forgotten to send notice to that appointee? I understand that this has already happened with a national entry of a European application in a regular, i.e. paper, format. Where will the responsibility lie for such applications, particularly if deadlines are missed because of unfamiliarity with the local requirements?
D. Processing Time
On the subject of submission of documents, some consideration must also be given to time pressures created by an electronic patent filing system. Consider for example a facsimile request at 2:00 in the afternoon to file a patent application. Can a patent application be filed on the same day? The application will somehow have to be translated into digital form and submitted to the Patent Office. Perhaps this is one case where technology will take a step backward in the sense that sufficient lead time will have to be allowed so that the documents can be transferred into a digital form. Alternatively, of course, the practitioner could invest in an optical scanner, provided the practice can afford it.
E. Increased Initial Cost
Some Patent Offices propose to scan the documents as they are received whereas some will accept true electronic filing. Either technique could result in an increased expense for the applicant due to the need for filing replacement pages or drawings because the quality of these documents may not be sufficient for scanning purposes (or for examination purposes when the application is filed on-line).
It is not unusual for an initial application to be filed with informal documents to obtain an early filing date. However, as already has been seen in Canada, the requirement of submitting replacement documents within a short time period, typically one month so as to allow the scanning to proceed, could effectively mean that the documentation, and in particular the drawings, have to be prepared to a formal quality at the outset. This translates into a significant initial expense for the applicant. Obviously, there is a balance that can be reached here in terms of the requirements and the time at which such documents are really needed but again some understanding of the problem on the part of the Patent Office is required.
It is perhaps worth noting a trend that seems to occur whenever a new, improved, sophisticated system is put into place; namely the new system takes over the old procedure rather than enhancing it. As a practical example, we are presently revising the patent rules in Canada in general including those related to the filing of applications. It has been suggested by FICPI Canada that it would assist Canadian companies if claims were not required at the time of filing. This was enthusiastically received until it was realized that the new automation program could only issue a filing receipt if there was an indication that claims had been received. No claims, no filing receipt according to the computer. In Canada we are in danger of losing a very real benefit because of the way the program operates.
F. Office Management Systems
No doubt there are benefits to the profession and to the Patent Offices with the proper implementation of an electronic patent filing system. Besides a reduction in the amount of paper that is used, such a system could also take some of the burden off the professional's diary maintenance by providing an on-line access to cases for which a professional is responsible from which due dates could be checked automatically. A regular check of outstanding Actions on the Patent Office file against those on the professional's own system would provide some comfort if not absolute assurance for the patent professional.
Along a similar vein, a maintenance fee system monitored electronically within the Patent Office and made available to practitioners might avoid the need for the practitioner to implement his own system. If reminders can be generated from the database kept by the Patent Office, a somewhat onerous and unprofitable task could be taken away from the practitioner's duties. All of this, however, requires co-operation between the profession and the implementors of the system.
IV. LIABILITY
A. Increased Risk or Status Quo?
Perhaps the thorniest issue in electronic patent filing is the question of liability from using such a system. If a practitioner sends off a patent application through the telephone wires, how can that practitioner be sure that the application has been received, that it has been received accurately, and that a filing date will be given? Liability issues therefore flow from the failure to receive transmitted documents and from errors caused by transmittal.
The risks and attendant liabilities are most apparent when considering the filing of an application. The application filing date is of course the critical date but many other types of correspondence, including Office Actions and amendments, are equally time-sensitive. Knowing whether a patent document has been timely received is therefore vital.
Similarly there will be risks if, as has been proposed, the Patent Office distributes Office Actions electronically. What if the practitioner never receives one and never enters that due date into a diary? Will the Patent Office be sympathetic, or will the practitioner be held responsible for something he never received?
Of course, these problems are not unusual and they already exist with mail systems and the like. However, such systems have become commonplace and safety checks have been set up to ensure that liability is minimized (return postcards, stamped copies of cover letters, etc.). Besides safety checks, a "track-record" has been established in this area on which insurance companies can base their premiums and against which the issue of negligence can be considered. Now, however, the document that is being sent cannot be even seen or touched. How will the use of a computer system affect these risks and the liability of the professional?
B. Apportioning Risk and Liability
There is very little case law in Canada dealing with the issues of liability between various parties using or relying on computer records. Perhaps this is because disputes tend to be settled by discussion between the parties and a desire to keep such breakdowns out of the public eye.
Matters arising from the accuracy of the computer (especially in the case where the computer is used mainly as a mode of transmission and storage of information rather than as a processor of such information) most often result from the negligence or wilful falsification by human operators rather than the mechanical fitness of the computer. In these situations the traditional legal doctrines of negligence, estoppel, and waiver govern, unless, of course there is a specific contract between the parties.
i) Basic Principles
The doctrine of negligence is based on the duty of reasonable care. In the case of electronic patent filings, this requires that reasonable care should be taken when, for example, entering data and text into the system; sending the text to the correct recipient and checking to make sure that the information was received. Care should also be taken in the selection of the equipment used to prepare and send the information. All of this of course is in the hands of the professional.
The electronic filing systems are being designed and installed by the various patent authorities and accordingly they have a similar duty of reasonable care. From the perspective of the patent office, care should be taken in the selection, maintenance, administration, and reliance of the computer system. The patent office should also exercise reasonable care in relying or acting on the data received, to make sure all the pages are received etc and to notify the sender if something is obviously in error. It is also reasonable to expect that care has been taken to ensure that the system is structured to avoid errors in data entry or at least reduce them to an acceptable level.
Applying these basic principles, should any dispute arise from the use of such a system, the liability could be apportioned according to who breached their duty of care. I would suggest however that where the use of an electronic filing system is mandated by the patent office and the design and implementation of the system is under the control of that office, then they have a high duty of care and cannot avoid liability in the case of malfunction of the system. It has been suggested that the Patent Offices should not be unduly concerned because as part of the Government, they have immunity from liability. That may or may not be the case in different countries but I would just observe that two of the Offices implementing EASY are supra-national offices - EPO and WIPO - and such immunity as may extend to the Crown or Government may not flow through to such an entity.
ii) The "Blame It On The Computer" Defence
This approach to liability by ignoring the effects of the computer system has been criticised as artificial. It has been suggested that although the basic standards of duty of care should be retained, due regard should be taken of the nature of the computer. Even the most sophisticated data systems have predictable error rates which arise without human negligence. Indeed one of the early applications of chaos theory was to show designers at Bell Labs that no matter how they designed their hardware systems there would inevitably be errors in transmissions. Accordingly, they directed their efforts to designing error correction systems rather than more robust hardware. It follows that in such a situation neither party is negligent and it is uncertain who, if anyone, should bear the liability. Whilst this may be comforting to the profession and the office, it does not help our client who has lost his convention date because of an inevitable computer error. He is unlikely to be appeased by an explanation that it was all the fault of the computer.
iii) Analogous Situations
An electronic patent filing system is not yet in place in Canada but other electronic systems , such as that used for the filing of securities under the Personal Properties Security Act (PPSA) provide some guidance. The PPSA is a registration system by which a person who has a security in a property, e.g. a house, a car, business assets or even a patent or trademark, can record that interest on a government run registration system. His registration establishes his priority to that property and similarly anyone who is about to take a security interest can check to see if any other claims are prior registered.
As an example of how the use of computers emphasizes the need for accuracy and the possibility of catastrophic results that can flow from minor inaccuracies, consider a case under the PPSA mentioned above.
In Re Clinton's Flowers & Gifts Ltd, (1993), 5 PPSA(2d), a bank held a general security interest in the bankrupt company, CF Ltd., securing all personal property. A financing statement was properly prepared in compliance with the regulations of the Personal Property Security Act (Ont.). The staff of the registrar recorded the information from the debtor name line in the computer database incorrectly as "Clinton Flowers and Gifts Ltd." instead of "Clinton's Flowers and Gifts Ltd.".
This error meant that a registry search under the correct debtor name would not have revealed the existence of the bank's interest. The bank received a verification of registration statement from the registrar, submitted as an exhibit at trial, which showed that the financing statement contained the debtor's correct name: the bank was unaware of the database error.
Upon bankruptcy of CF Ltd., an issue arose between the trustee and the bank as to whether the bank's interest was perfected or unperfected due to improper registration and thereby subordinate to the trustee. The trial court held that the error in the spelling of the debtor's name would mislead a reasonable person materially and that, therefore, the bank held an unperfected security interest subordinate to the trustee in bankruptcy.
Not surprisingly, the bank appealed and won. The court of Appeal looked to the definition of registration of the document in the statute and found that because a time and date had been given to the original, correct, document, the bank's interest had been registered.
It could be observed that this case simply deals with a manual error and is not peculiar to computerized systems. However, the basis for the initial court decision was that the computerized data base would not identify the bank's security interest when asked to search under the correct company name and so the security interest was not perfected.
I think that in a purely manual system, a diligent searcher would have at least noted the existence of "Clinton" rather than "Clinton's" but the computer does not exercise such discretion or initiative. Therefore, by building a system the depends upon and is governed by the results of such an unforgiving, rigid tool, a relatively minor error can lead to catastrophic and clearly inequitable results.
Is it unreasonable to extrapolate this situation to the incorrect naming of an applicant in an original application and a subsequent denial of priority because a computer search does not reveal an application made in the name "Clinton's", although one for "Clinton" does exist?
C. Mitigating the Risks
There are, of course, other areas where time-sensitive confidential information is transferred, banking systems for example. Commonly, the liability in using electronic data transfer systems such as banking systems is governed by contract between the parties. These contracts take into account the relative interests of the parties and reach a set of conditions that are reasonable and equitable.
i) National Considerations
It would seem that a similar approach could be taken with the patent profession by incorporating suitable provisions in the national and supranational patent statutes. A patent office, however, has to balance its own interests with those of the users and the public interest. A practice that is flexible and beneficial to the applicant may work to the detriment of the public at large by granting monopoly rights where the applicant, by its own actions, is not entitled to such rights.
ii) International Considerations
In considering this particular issue it should be remembered that the requirements for obtaining a filing date are set nationally. The Paris Convention does not set the standards, it only requires the equal treatment of nationals and non-nationals of that country. Some countries do not even provide for restoration of an abandoned application (a matter under active consideration by AIPPI and supported by FICPI).
In the Patent Harmonization Treaty, there is a consideration for a minimum of requirements for obtaining a filing date, but of course this is not likely to be adopted in the near future. As part of those same discussions, FICPI promoted a restoration of the priority term where a filing date was missed due to circumstances that could not be foreseen, and are clearly beyond the applicants control. This request met with sympathy but has not yet been adopted.
D. Authentication and Security
Up until now, I have concentrated largely on the liability that may arise in filing, or rather not filing, documents. Liability may also arise from unexpected sources that are not present with paper based systems. New patent applications are of course a source of valuable information. At best it will be 18 months before the application is available for inspection, a reasonable term of confidentiality. Electronic filing however renders the transmitted document vulnerable. I am told by experts, and I have no personal knowledge of this, of course, that transmission of data over a telephone line is relatively easy to monitor and retrieve. This is particularly true where there is a pattern to the transmission, i.e. the same time each day, or where the transmission is directed to the same recipient, e.g. the Patent Office.
Again, the problem is relatively easy to solve by using encryption devices. These are commercially available, but of course, need to be bought, installed, maintained and used properly. Still more expense for the practitioner!!
Similarly, systems must be implemented to inhibit unauthorized access to an applicant's file and to authenticate the sender. Electronic signatures are available but again require additional equipment. There may also be a licence fee of $1.00 per signature when using the patent on this system. Do not worry, it is only money!
E. The Prudent Practitioner
At present therefore it seems that a practitioner who wishes to use an electronic filing system and who wishes to mitigate his liabilities should ensure that:
1. He has reliable, reputable equipment, preferably selected with the assistance of a professional knowledgable in the area and includes encryption and authentication capabilities;
2. He routinely checks the contents of a file prior to filing;
3. After filing, he records the acknowledgment of receipt of his transmission, or, if filing on diskette, retains a copy of the diskette as filed; and
4. Immediately after filing, he retrieves a copy of what has been filed to check for errors.
This places a great burden on the practitioner and is perhaps unrealistic. A preferable approach of course is to work with the relevant bodies and provide a system that addresses these issues and reduces the potential liability for both the practitioner and the offices. These measures need not be technical in nature and indeed the majority would be beneficial with or without the electronic filing.
Among the measures I would suggest are:
1) Provision of a "telex" filing procedure for priority applications requiring only identification of the priority application;
2) The support by the Government for restoration as of right for pending applications and, under suitable circumstances, for the priority term;
3) The establishment of a set of guidelines to advise the profession how to maintain their records so that substitute documents from the Agents file will be accepted. By this I mean an equivalent to a certificate of mailing or acceptable archiving program that will allow the file to be rebuilt.
4) Acceptance of a paper copy in situations where the document is particularly complex, such as where mathematical functions are included, and is most likely to be interpreted incorrectly by the recipient;
5) A provision that deems a document to be filed in accordance with the applicant's file record if it has been transmitted to the Office and an electronic acknowledgement has been received by the applicant.
V. Evidentiary Issues
The question of accuracy of documents in a Patent Office's files leads on to the question of whether the records being created by electronic patent filing systems will be acceptable in a court of law. Whilst a patent office may accept various procedures and grant patent rights to applicants, it is ultimately the courts that are asked to adjudicate those rights.
A. The Generation of Evidence
If the evidence necessary to enforce a patent right is inadmissible, the rights themselves are worthless.
Evidence has been defined as
"any species of proof or probative matter legally presented at the trial of an issue, by the act of the parties and through the medium of witnesses, records, documents, exhibits, concrete objects, etc. for the purpose of inducing belief in the minds of the court or jury as to their contention (emphasis added)."
More succinctly, evidence has been defined as
"testimony, writings, material objects, or other things presented to the senses that are offered to prove the existence or non-existence of a fact."
As patent practitioners, we generate evidence for use in the courts on a daily basis. This is done, for example, by submitting applications that describe an invention that has been made and thus the entitlement of an applicant to obtain protection for that invention; by submitting amendments that may explain terminology or may change the nature of the invention claimed; by submitting documents proving title; and by paying fees to maintain an application or patent in good standing. As and when a patent matter comes before the courts, any or all of these documents may be required in a particular circumstance to support the case, either for the plaintiff or the defendant.
Despite the widespread use of computers for record-keeping, data-processing, information transmission, etc. in today's business and government operations, the statutes of many countries still make no reference to computer-produced records. To illustrate the type of issue that may arise, I will refer to what appears to be the present situation in Canada.
B. The Canadian Situation
Except for Saskatchewan, provincial and federal statutes do not deal with computer records. It is therefore necessary to look to the common law and statutory rules applicable to other business records in order to determine admissibility and weight of computer-produced documents. However, even for business records as a whole, only very general standards are provided by which a court is to decide on the issues of admissibility and weight.
i) Basic Rules of Evidence
There are essentially three evidentiary rules which are relevant to the introduction of computer records as evidence to prove the truth of their contents. First, the "hearsay" rule states that only a witness having personal or first-hand knowledge of the facts attested to may adduce such as evidence to prove the truth of the statement. The hearsay rule will prevent the admission of most business records, including, in our case, computerized patent filing records, as evidence since they may be compilations of entries made by numerous people and therefore may be one or more steps removed from the person having personal knowledge of the facts recorded. In fact, when the application is transmitted by telephone, no one in the Patent Office may have any first-hand knowledge of the filing.
Second, the "best evidence" rule states that a document is admissible only if produced in its original form unless the original is unaccounted for or is unavailable. The reason is that the "original" being the first made record would be made closest in time to the events recorded and not at risk of containing alterations, and therefore, in theory, would contain the most accurate recollection of those event. Since the Patent Office computer records will only ever exist in electronic form, the "original" record may take the form of electronic impulses recorded on a tape, disc or other machine-readable medium, with the human-readable print-out being only a transcript of the original. The transcript, however, is only produced at the time requested, not contemporaneously with the event.
Third, with respect to those records which consist of compilations or analysis of data by a computer (rather than simple reproductions of printed data), a file history perhaps, it may constitute "opinion" evidence which is admissible only if testified to by an expert.
ii) Common Law Exemption
Although these rules inhibit the introduction of computer-produced records, there is an exemption for "business records" so that they may be admitted provided certain conditions are met.
The common law "business records" exemption permits the admission of a business record if it is an original record made:
(a) contemporaneously with the events that it records;
(b) during the routine of business;
(c) by a person under a duty;
(d) by a person who has no motive to misrepresent; or
(e) by a person who is since deceased.
The principle underlying the exception is that the case must be one in which it is difficult to obtain other evidence; there must be safeguards in that the person has knowledge of what is recorded yet has no motive to misrepresent and it is recorded in the ordinary course of business, contemporaneously and before any dispute arises.
However, Canadian case law so far has applied these criteria somewhat inconsistently. For example, the case of Ares v. Venner, (1970) S.C.R. 608 (S.C.C.) held that it was unnecessary that the person who made the records be deceased (a great relief to all Patent Office personnel whose mortality could be the determining factor in a lawsuit).
The extent of the requirements of contemporaneity and personal knowledge are also unclear. The personal knowledge requirement may limit the usefulness of the exemption in the case of an electronic patent filing system since the person entering the information into the computer is likely not to have personal knowledge of the facts recorded or is an interested party (the patent agent). Furthermore, there may be more than one person involved in inputting the information as the records are sent from the applicant's office to the various patent offices. To overcome these difficulties, one author argued that the computer should be considered as being in the same position as the person recording the information, ie. so long as the record is compiled or produced as part of the ordinary function of the computer, the output would be deemed to be made by a computer under a duty to produce the result and in the course of the ordinary business in which the computer is used.[1]
There is further difficulty with the "original" record requirement. It has not been settled whether the courts will accept computer printouts as an "original" record. One court sees the original entry into the database as the "original" record and treats computer printouts as copies only, while another accepts computer printouts can also be "original".[2] It is therefore unclear whether the computer record would be admissible under the exemption for business records and so it may be preferable to rely upon the statutory exemptions for the admission of computer records.
iii) Statutory Exemption
Section 30 of the Canada Evidence Act states that records made in the "usual and ordinary course of business" are admissible, and that courts should have regard to "the circumstances of the making of the record". Most of the provincial evidence acts,[3] like the Ontario Evidence Act, has similar provisions with a few noted exceptions in the requirements.
Both the Canada and the Ontario Acts have dealt with the common law hearsay problem by removing the requirement for personal knowledge of the facts recorded. Subsection 35(4) of the Ontario Act provides that the circumstances of the making of the record may be shown to affect its weight but not its admissibility. This is expressly stated to include any lack of personal knowledge by the person entering the information into the computer record. The Canada Act does not go as far as the Ontario Act but permits the court to examine all circumstances of the making of the record. The Acts will therefore allow admission of electronic patent records where re-formatting and reorganization of the information may be necessary as the information is sent through different agents and patent offices.[4]
The "original" record problem has been specifically dealt with by subsection 30(3) of the Canada Act which provides that in the event where it is "not possible or practicable" to produce an original record, a copy of the record is admissible if accompanied by affidavits setting out the reasons for not producing the original, attesting to the accuracy of the copy and setting out the qualifications of the person by whom it was prepared. This provision overcomes the hurdle of the "best evidence" rule and will allow printouts of the computer records to be admitted even if the court does not accept it as an "original". The Ontario Act does not expressly deal with the admissibility of a copy.
However, it is still necessary to prove to the satisfaction of the court that the copy offered is a true copy of what is in the record (R v. McMullen (1979), 47 C.C.C. (2d) 499). This would involve testimony from the person(s) responsible for the records as to the facts of the complete recordkeeping process, including processes relating to the input of entries, storage of information and its retrieval and presentation.
With an electronic filing system, the computer printouts required would likely be straightforward records of the information entered. However, if the printouts represent compilations or analyses of the information, for example, where the computer determined priority based on the dates entered from various applications or where a number of documents were collected into a file history, the printout may be characterized as opinion evidence. According to the rules, this would have to be adduced by an expert witness. It is uncertain whether this is still a requirement under the evidence acts. In Setak Computer Services Corp v. Burroughs Business Machines Ltd. (1977), 15 O.R. (2d) 750 (Ont.H.C.), the court held that subsection 35(2) of the Ontario Evidence Act does not permit admissibility of a business document to prove the validity of an opinion which would not otherwise be admissible unless given by a duly qualified expert. On the other hand, the court in Tecoglas Inc. v. Domglas Inc. (1985), 51 O.R. (2d) 196 (Ont. HC.), held that computer printouts were admissible as business records under either the common law or subsection 35(2) even though they contain opinion evidence.
It is important to note that in both the federal and the provincial evidence acts, there is a requirement that the records be made in the "usual and ordinary course of business" to ensure the reliability of the records. This vague statement has not been defined and Canadian case law has been unclear as to what standards to apply in order to ensure reliability of the records. The court in the Setak case held that according to the Ontario Act, documents are admissible whether it is principal or ancillary of the company's business as long as it is made in the usual and ordinary course of some phase of the business. It seems that different judges apply different standards depending on the facts of the case.
Since the Evidence Acts expressly direct the courts to consider "the circumstances of the making of records", it is important that the party seeking to use the computer records provides the court with evidence as to the nature and reliability of the computer system. This might include showing that the input procedures conform to established standards in the industry; accuracy and reliability of the software; sources of information; that the information was entered in the routine course of business; reliance on the information in making decisions; and security features used to guarantee the integrity of the recordkeeping system upon which the printout is based.[5] It is suggested that these key parts and procedures to recordkeeping systems should be incorporated into the testimony of record managers and witnesses.
The court in R. v. Rowbotham (1977), 33 C.C.C. (2d) 411 (Ont. Gen. Sess. of the Peace) held that in the absence of such "foundation evidence", computer printouts were not admissible. There must be some evidence before the court as to where the document came from, how it was prepared, what was the origin of the data and what procedures were followed to produce it. Additional evidence may also be required where computerized documents are produced as a result of the use of an external service bureau rather than an internal computer system. This requirement may be especially onerous in the case of international patent filings where it involves different computer systems in various countries that could be considered "external service bureaus" of the Canadian Patent Office. The courts may, for example, require the party seeking to adduce records transmitted from the home country through, for example, the European Patent Office to another country's Patent Office, to have witnesses testifying to each of the systems that the records passed through in order to admit the final printout of the application as evidence.
iv) Public Records
The discussion above has considered the documents that may be needed in a patent trial to be of the nature of business records. This is the most general case and would seem to encompass any of the documents that may be required. However, the Canadian Evidence Act does provide further exemptions where the document is an official or public document of Canada or any province. Provided the document is certified to be a copy of an original record by the person having custody of the official or public document, it can be admitted into evidence without proof of the seal or the signature of that official (Canada Evidence Act, s. 24). Similarly, the statute provides that a copy of any entry in any book kept by any branch of the public service of Canada can be admitted as evidence of the entry if the official provides an affidavit that the entry was made in the usual and ordinary course of business of the branch of the public service, and that the copy is a true copy (Canada Evidence Act, s. 26).
These exceptions are utilized for the submission of certified copies and the like of patents but do not necessarily solve the problem of how to submit those documents when they are stored electronically. For example, if a transcription is made, can the officer of the Patent Office say that the document is a copy of the original, or does he have to say that it is a transcript of a record that purports to be the same as the original document? There is also case law in Canada that a computer printout is inadmissible under the statutory provisions of the Canada Evidence Act because the record is not a copy of any entry in any governmental book (R. v Sunila (1986) 26 C.C.C. (3d) 331 at 335-336).
This case dealt with drug trafficking and the admissibility of a computer tape of the plotting of positions of the vessels under surveillance by the Canadian Armed Forces and so is a little removed from most patent actions. The court was not prepared to allow entry of the computer tape under the exemptions for Public Records as a copy of any entry in any book kept in any office or department of the Government of Canada. The court noted that although the sections of the Canada Evidence Act dealing with business records had been remedied to bring them up to date (although not specifically referring to computer records), the section dealing with the admissibility of a government book had not been similarly updated. The court noted that other cases had held that the word "book" is not a narrow term and could include, for example, files loosely fastened together, but it could not be stretched to equate the term "book" with a computer. This would be tantamount to legislating a new word into the statute which was the responsibility of the legislators, not the judges.
It will also be recognized of course that these provisions only deal with the copies of documents kept by the Canadian Patent Office for use in Canadian proceedings. It does not, for example, deal with the case of a document kept by the European Patent Office that would subsequently be required in a Canadian proceeding.
The above analysis perhaps indicates the tortuous legal path that may have to be followed and the many legal hurdles that may have to be cleared in order to introduce something as simple as a copy of the file history or the original application into a court. Pragmatically, of course, there should be no difficulty but if you are representing a defendant you would perhaps be obliged to try to rely upon this type of argument to prevent the admission of an essential document into court.
B. State of Law in Other Countries
In light of the difficulties and uncertainties arising from the present state of the law in Canada, it is useful to examine the state of law in some of those countries which have already made such changes to their law.
In the United Kingdom, the Civil Evidence Act 1968 specifically states the requirements in order for admission of computer printouts as evidence: for example, the computer must be regularly used and supplied with the kind of information in the statement and is operating properly (or at least defective operation did not affect production or accuracy); further the information must be derived from that supplied to the computer in the ordinary course of activities.
The South Australia Evidence Act 1929-1976 has similar requirements for regular use but more specific provisions regarding safeguards from errors, alterations to mechanisms and processes, improper procedure and correct programming (Please see Ken Chasse, Computer Printouts- Designing provisions for the new Canada Evidence Act: Part I (1985) 2 C.C.L.R.).
South Africa has a specific Computer Evidence Act 1983. The Act allows for admission of computer printouts when accompanied by an "authenticating affidavit" describing in general terms the nature, extent and sources of the data, instructions supplied to the computer and the purpose and effect of the processing of the data by the computer.
One of the problems of electronic patent filing systems is that any "document" produced by it is produced at the time it is requested and so the record upon which you rely is not made contemporaneously with the event you want to establish. Moreover the document may not look like the document originally created. For example, if this article were printed with single spacing or with a larger font, then it will have a different number of pages to the original of this article. Is it the same document for evidentiary purposes and could an affidavit be sworn that this new "copy" is the same as the original document? How should this new "copy" be compared with an original when the original may itself only exist in some indeterminate form on a magnetic disk? A simplistic question perhaps but it does demonstrate how the whole patent system would be torpedoed by implementing a system that does not meet some basic evidential requirements.
In the United States, the courts are given a wide discretion by the U.S. Federal Rules of Evidence which allows for admission of computer printouts "unless the source of information or the method or circumstances of preparation indicate lack of trustworthiness".
Even the brief review of the state of law in other countries suggests a wide disparity in the conditions by which computer records can be introduced and does perhaps suggest a nightmare for providing certified copies of documents for use in other countries. It seems that the form of the certificate is going to have to comply with the requirements of the country for which the document is intended rather than the bland certificate that is now used.
C. International Treaties
I thought that perhaps some sanity could be brought to the situation through the operation of the various international treaties that regulate our profession. I therefore reviewed the International treaties in order to determine what constitutes sufficient evidence for the purpose of (i) filing under the treaty; and (ii) the national courts. There is nothing under the current provisions of the Paris Convention (London Text), the Patent Cooperation Treaty (the "PCT") and the European Patent Convention (the "EPC") (together the "Treaties") which address the inconsistencies between the national laws.
Under Article 4(A)(2) of the Paris Convention, any patent registration which satisfies the formal requirements of the internal law of one of the countries shall give rise to a right of priority. It is only necessary to produce a copy of the earlier application certified as correct by the proper authority (Art.4(D)(3)) in order to make a declaration of priority. However, Article 4(D)(5) then goes on to state that "at later stages, further proof in support of the application may be required". It thus seems that if a home country accepts electronic application, a certified copy of the printout would be acceptable for the initial claim of priority, but further proof may be required afterwards.
Both the PCT and the EPC provides their own detailed rules regarding the procedure and form of application. These will have to be amended to accept electronic applications. Under the PCT, for the purposes of priority, a certified copy of the earlier national application must be filed with the International Bureau or international office no later than 16 months after the priority date (Rule 17.1.). Electronic filing of application has not been provided for by the rules thus far. Article 27 of the PCT states that "no national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in the PCT and regulations". In other words, an application filed electronically in WIPO will be accepted in other member states for establishing an effective filing date. However, article 27(2)(ii) and Rule 51 bis goes on to state that national law is not precluded from requiring documents not part of the international application but which constitutes "proof of allegations or statement made in that application".
Similarly, the EPC has specific requirements with respect to filings of applications which will have to be changed. It is perhaps ironic that according to commentaries on the EPC, the documents of the application must be presented in such manner as to allow "direct reproduction by photography, microfilming and similar processes" and that the text of applications, translations or any documents at all may not be filed on diskette or similar data carriers, by teletex or similar means. It is interesting to note that Rule 24 of the European Patents Regulations states that the President of the European Patent Office may permit applications to be filed by other means of communication and lay down conditions governing their use.
The international treaties, therefore, do oblige member states to accord a priority when a national filing date has been given but do not prevent further challenges being made to that claim of priority or require a member state to accept records maintained by other countries. It would seem to be left entirely to the evidentiary rules of the individual countries to determine whether any particular document is admissible as evidence in their courts. Perhaps it is not too late to consider some such provisions or guidance within the Patent Harmonization Treaty so that records produced by the Office of a member state are, in the absence of evidence to the contrary, deemed to be accurate whether stored electronically or in any other means.
How much of a practical problem is this lack of harmonization? Consider for example a PCT application filed in the EPO establishing rights in all the designated countries. Any records kept must satisfy the requirements of the courts of every country in which the application may ultimately be adjudicated. If they do not, then the national right may be unenforceable, simply because a record is not available that establishes up to the standard of evidence required by that national court that, for example, a certain specification was filed on a certain day or that an assignment was indeed the document that was actually executed by the applicant.
As a practical example, consider a Canadian applicant who files a PCT application that is examined in the EPO and subsequently matures to grant in the U.S. During the preliminary examination comments on the art and claims are filed electronically from the agent's office and recorded electronically in the EPO. Those comments could introduce limits into the claims by explaining a term for example. During litigation in the U.S. the defendant wants to rely on those comments in its infringement defence as a file wrapper estoppel and to do so must introduce the amendments into the evidence in the proceedings. However, if the records maintained by the EPO do not satisfy the evidentiary criteria for the U.S. courts they will not be admissible, leaving the defendant without its main defence. If this seems unlikely or unreasonable, just consider the evidential concerns raised by U.S. practitioners when it is suggested that section 104 should be extended to include activity dates outside the U.S.
SUMMARY
In reviewing this article I compiled an account of the costs and benefits of the electronic filing systems.
On the cost side I noted:
- a specific type of computer;
- a specific operating system;
- a specific processing application;
- a modem;
- an optical scanner;
- an encryption module;
- an electronic signature;
- a computer literate secretary;
- increased liability; and
- decreased certainty.
On the benefit side, I see reduced paper in the Patent Office, but not necessarily in the professional's office.
In preparing the paper, it could be suggested that I have been unduly critical and perhaps alarmist about some of the consequences, and such criticism is probably justified. What I have attempted to do, however, is to highlight how relatively minor matters could lead to relatively major effects. Most of these issues could readily be solved by proper consultation between the Patent Offices and the profession and by an appropriate recognition of the difficulties that each has to face. I hope that by raising the issues in this manner and continuing with the dialogue that has been established with the various authorities, it is possible to avoid some of these pitfalls and enjoy the benefits that the new technologies should bring to us.
ENDNOTES
1. J. Douglas Ewart, "Documentary Evidence: The Admissibility at Common Law of Records Made Pursuant to a Business Duty" (1981), 59 Can. Bar Rev. 52 at 74-75.
2. See R. v. McMullen (1979), 25 O.R. (2d) 301; R. v. Bell and Bruce (1982), 35 O.R.(2d) 164, aff'd. without reasons [1985] 2 S.C.R. 287); R. v. Hanlon (1985), 163 A.P.R. 266 (N.S. Co.Ct.).
3. In Quebec, the Civil Code does not have a business records provision and the common law rule would not apply; In Alberta, the Evidence Act contains no business records provision, therefore it is necessary to rely on the common law rule.
4. Note that the New Brunswick Evidence Act makes no reference to the circumstances of the making of the record.
5. Note that the New Brunswick Evidence Act makes no reference to the circumstances of the making of the record. For more details on key points of computerized recordkeeping, please refer to Ken Chasse's article on Admissibility: Advising the client who wants to re-create the original, not retain it (1989), 6 C.C.L.R. 162, at p.166.