If you want to find something, the Internet is often the best place to look. However, there are potential trap doors when using web information as evidence in patent prosecution and litigation. Web sites can be useful evidence but reliability needs to be critically evaluated. As well, rules on proper citation of hyperlinks (i.e. URL’s) in legal documents must be kept in mind to avoid having the evidence in the web pages refused. Recent developments illustrate the need for caution in patent applications and scientific expert affidavits.
Prior Art
Patent Offices routinely cite web pages as prior art against patentability of patent applications. An Examiner will typically assert that an invention is not novel or inventive in view of the web page contents. Patent applicants should verify, where possible, that the web page contents and publication date cited by the Examiner are accurate. For example, one can look to an archiving database such as www.archive.org to verify the information that the cited web page contained in the past. Finding an inaccuracy may remove the web page as prior art.
Patent Applications
There are limitations on patent applicants' use of hyperlinks. For example, the U.S. rules contain an express prohibition against a patent application incorporating by reference a prior art document using a hyperlink (37 CFR 1.57(d)). Prior art is often used in a patent application to demonstrate how to make and use conventional aspects of a new invention (e.g. conventional methods of formulating a new drug). The Patent Office objection may be avoided by drafting a patent application that uses a conventional written description without a hyperlink. It may also be helpful to state prior art DNA and protein sequences rather than hyperlinks to a sequence database.
Evidence in Court
Court cases have also refused web-based evidence where it was not cited properly. In Janssen-Ortho Inc. v. Novopharm Limited, 2009 FC 1179; a Patented Medicines (Notice of Compliance) Regulations proceeding, Canada’s Federal Court confirmed that a mere reference to a home page hyperlink in an affidavit was not sufficient to import the full contents of the website into evidence. Citing the home page was not even sufficient to allow importation of selected pages within the web site.
The case involved a generic drug company trying to strike out expert witness evidence about drug tolerance. The scientific expert’s affidavit referred to the Royal College of Psychiatrists website by its home page address only. It did not specify any pages within the website or attach website pages as exhibits.
The innovator company later attempted to get selected print-outs from the web site into evidence by asking the generic company's expert witness questions about the print-outs during his cross-examination. However, the generic company witness refused to verify the source of the print-outs, meaning that they could not be entered as evidence. The innovator company, nevertheless, included the print-outs in its arguments to the court and cited contents from the print-outs in its written arguments. The generic company asked the court to strike out the print-outs and all references to the web pages. The innovator resisted and countered by asking the Court to allow a new affidavit from a law clerk attaching the print-outs from the website.
The Appeal Court agreed to strike out the expert witness evidence on the basis that providing a hyperlink cannot make the entire site and all of its contents evidence. The generic company was not required to go on a hunt to try and ferret out the evidence with the hope that they are correct in finding what might be referred to in an affidavit. The web site evidence was not permitted because the contents of the website had clearly been available when the applicant had filed its evidence in chief. Specific web pages should have been attached to the affidavit, or at least full hyperlinks should have been provided. Supplementary evidence could not be provided later on the basis that the innovator mistakenly thought that the original evidence was sufficiently presented to put it on the record. The supplementary law clerk affidavit was also refused as hearsay because the clerk was not a scientific expert witness that could attest to the accuracy of the facts in the web pages.
Advice
Web sites are typically admissible as evidence. However, it needs to be carefully confirmed in advance whether the Patent Office or Court allows the intended type of web evidence and format. If there is any doubt about reliability or admissibility, it is good to cite conventional written evidence from journals or textbooks in addition to web-based sources.
John H. Simpson, B.A. (Hons.), M.A., LL.B., is an associate lawyer in Bereskin & Parr LLP's Litigation Practice group. John can be reached in Toronto at 416.957.1657 or jsimpson@bereskinparr.com.
Noel Courage, B.Sc. (Biochem.), LL.B. is a partner in Bereskin & Parr LLP. His practice focuses on the patenting and licensing of chemical, biotechnological and pharmaceutical inventions. He can be reached in Toronto at 416.957.1655 or ncourage@bereskinparr.com.
