Unwired Planet Inc is a Nevada based company with only 16 employees and no products. But what is does have is a portfolio of over 2,000 patents in the mobile communications field - and it plans to use them to extract licensing fees from major international players. One element of Unwired Planet’s strategy is a series of patent infringement suits in the UK and Germany. The first of six London trials has now taken place, resulting in a clear win for Unwired Planet against Huawei and Samsung.
Alongside the political questions around whether patent-licensing entities are "trolls" that should be curbed, an interesting point about dates and deadlines gets us thinking about where in the world last minute patent filings could be made.
A public disclosure and a patent filing
The patent at the heart of the case deals with an efficient polling system method for use with packet switched networks. This technology was declared by its original owner Ericsson as essential to the LTE 4G telecoms system standard early in 2008. It was to be discussed at an ETSI working group meeting in mid-January and details were uploaded onto the ETSI file server on 8 January 2008. This happened a few hours before the first patent filing was made.
Choosing a time zone
Public disclosure of the technology in a patent before filing can destroy its validity. There are some exceptions to this, in the US for example, but in Europe the rule is strict. And it looks not at absolute times but at calendar dates –
“The state of the art… shall be taken to comprise all matter… which has at any time before the priority date of that invention been made available to the public...”.
Had Ericsson undermined its own patent application by uploading the technical file to the ETSI server?
Several time zones were relevant.
The patent being litigated was a British one – GMT.
The uploading of the technical document took place in Europe – CET.
The patent priority document was filed at the US patent office – EST.
And, said Huawei and Samsung, the time in Hawaii was also important, because at the time the technical document was uploaded, it was still 7 January there.
Eastern Standard Time wins
The judge decided that the place where the patent priority document was filed – EST - should set the clock. The relevant times there were 2.36am on 8 January (time of disclosure) and 16.59pm later that day (time of priority document filing). Because these events both took place on the same date this meant that novelty was not destroyed.
A back-up option for late filings?
Ideally patents should be filed in good time before any public disclosure is made. Accidents do happen, though, and so perhaps it is worth developing contacts in one of the more recent signatories to the Paris Convention that is conveniently 11 hours behind London - Samoa.