2 Various Issues Regarding the Information on Advanced
Technology Stored in a Web Archive Such as “Publicly Known”
The JPO plans to create a searchable Web archive, “Advanced Technology Information Archive,” as an
in-house database. The archive system will collect online information by crawling through websites. While
Web archive services similar to this Advanced Technology Information Archive have already been provided
by some private organizations, it is needed to discuss various issues in a comprehensive manner inanticipation of the creation of the Advanced Technology Information Archive. Such issues would include
how patent examiners would use the Archive, whether the archived information is “publicly known,” andhow to prove that the archived information has not been falsified.
In this study, research was conducted on the use of Web archive services by intellectual property offices
in other countries, and also on the patent offices’ trial decisions and court judgments regarding thereliability of information stored in Web archives. Furthermore, domestic surveys were conducted withregard to the usability, necessity, and problems of the information stored in a Web archive from theperspective of patent examination. Based on the results of the surveys, relevant issues and points ofconcern have been addressed in this paper.

Ⅰ Introduction

2

1

Currently, the JPO plans to create a Web
archive system that sets target URLs,
automatically collects information available on
those URLs (crawling), makes indexes, and uses atime stamp system to record the date of
information storage and certify that the archived
information has not been falsified after the time ofstorage. (Fig. 1)

Background and Purpose of this study

With regard to the JPO’s new search system,
the JPO publicized the “JPO Services and System
Optimization Plan (to supplement the searchsystem).” According to the Plan, the JPO will
create the Advanced Technology Information
Archive as an in-house database by collecting
online information by crawling through websites.
While Web archive services similar to thisAdvanced Technology Information Archive havealready been provided by some privateorganizations, it is needed to discuss various
issues in a comprehensive manner, in anticipationof the creation of the Advanced Technology
Information Archive. Such issues would include
how patent examiners would use the Archive,
whether the archived information is “publicly
known,” and how to prove that the archived
information has not been falsified.
The purpose of this study is to provide abasis for further discussion on how the
information on advanced technology stored in a
Web archive should be used in the course of
examination.

IIP Bulletin 2010

● 1 ●JPO’s planned Web archive system

Advanced Technology Information Archive

Setting target URL

Information on the Internet

Crawling- Technical standards- Corporate websites etc.
Outside JPO

Indexing

collecting
contents

patentdocuments etc.

Time Stamping-Certification of existence-Certification of nonfalsification

storing
contents

Registration

Fig. 1

Archive
Inside JPO
Use as Publicly known
Information

Image of the planned Web archive system

The JPO also plans to allow patent examiners
to use the information collected by this Web
archive system, and it plans to not disclose it tothird parties. Consequently, a patent applicant
who receives a notice of reasons for refusal from apatent examiner may not be able to find thenotified information on the Internet.
Furthermore, the JPO plans to collect online
information that is made available in the form of aset of documents on specific topics such astechnical standards and specifications. Suchinformation will be stored in the PDF format, etc.,
which allows the preservation of data in a format
similar to the printed-out version. The collected
information will be archived in the HDD of thecomputers in the JPO. While the JPO will be thearchiving agency, the operation itself might beoutsourced (practice by non-public servants).

Ⅱ Existing Web Archive Services
Internet Archive, which is an NPO in the
U.S., was established in order to build apermanent library of digital contents incollaboration with the Library of Congress andthe Smithsonian Museum. Internet Archive
operates the Wayback Machine, which currently
archives contents equivalent to about 150 billion
pages of online data. The Wayback Machineallows users to see Web pages of the past byentering the URL of the website that they areinterested in.

In Japan, there is a Web archiving project(WARP) carried out by the National Diet Library,
and a Web archive available in the Agriculture,
Forestry and Fisheries Research Information
Portal Site, called AGROPEDIA operated by the
Ministry of Agriculture, Forestry and Fisheries ofJapan.

Ⅲ Use of Web Archive Services in
the Course of Examination
Research was conducted on the use of Web
archive services by patent examiners of the JPO,
the USPTO, the UK-IPO, the DPMA (German
Patent and Trade Mark Office), and the EPO.
In the course of patent examination, JPO
examiners sometimes use the Wayback Machine
to search for referential materials about
well-known technologies and cite the materials asprior art documents.
The USPTO is allowed to use Web archive
services to ensure the reliability of the contents
and publication date of the online materials that
could be used as prior art documents if the online
documents themselves do not provide sufficientverification for such reliability.
The UK-IPO uses the Wayback Machine toverify the date on which a particular web-page
became available to the public. The date verified
by this service is considered to be valid in
general.
The DPMA uses the Wayback Machine forthe purpose of patent examination. The service is● 2 ●IIP Bulletin 2010

often used to verify the publication date of aparticular piece of online information.
The EPO sometimes uses the Wayback
Machine in order to verify or confirm thepublication date of a particular web-page.

Ⅳ Patent Offices’ Trial Decisions andCourt Judgments etc. Concerning
the Reliability of Information
Stored in Web Archives
This Chapter examines the patent offices’
trial decisions and court judgments etc. made inJapan, the U.S., the U.K., Germany, or by the EPO
with regard to the reliability of information
recorded by existing Web archive services.
In Japan, the information stored in the
Wayback Machine was found to be reliable by the
Tokyo District Court (2004(Wa)No.10431), but
found to be unreliable by the Intellectual Property
High Court (2006(Gyo-Ke)No.10358).
In the U.K., the UK-IPO found that the
information stored in the Wayback Machine asreliable (BL 0/362/09).
Such information was found to be unreliableboth in the judgment handed down by the German
Federal Patent Court (17W(pat)1/02), and in thetrial decision made by the Technical Board of
Appeal of the EPO (T 1134/06).

Ⅴ Domestic
Surveysonthe
Publication of Information on
the Internet
In order to grasp the current practice of
publicizing information on the Internet, adomestic questionnaire survey and a domestic
interview survey were conducted on quasi-publicstandard-settingorganizations,
which
set
technical standards and specifications, andcompanies that publicize various documents on
the Internet such as technical standards,
specifications, brochures, manuals, technicalreports, and other technical documents.
According to the results of the survey,
quasi-publicstandard-settingorganizations
publicize a variety of information on the Internet
including standards, specifications, technicalreports, and various reports. Since thoseorganizations have adopted a paid-membershipsystem, their websites contain information that isavailable only to those who have registeredpasswords or paid a fee.
The information that requires viewers toenter passwords may be divided into two types.

IIP Bulletin 2010

The first type is members-only information,
which is not for public viewing. The second typeis fee-based information that has been madeavailable for viewing by a wide public including
non-members of standard-setting organizations.
On the other hand, some information that is soldin hard copy has been made read-only accessavailable on the Internet without a password
requirement.
Regarding standards and specifications, somequasi-publicstandard-settingorganizations
mentioned in the survey that a publication periodof shorter than one month is rare due to thenature of those documents. The former versionsof those documents are often preserved andstored in hard copy within the relevantorganizations, even after such information isdeleted from the Internet.
On the other hand, companies provide online
access to their brochures, manuals, technicalreports,
technical
references,
technical
descriptions, etc. Some of these documents suchas technical reports are periodically updated,
whereas technical references and otherdocuments are updated from time to time. Somecompanies mentioned in the survey that apublication period of shorter than one month isnot so rare. Some respondents stated that online
information is modified when necessary.
Most companies answered that their online
information is available for free without
passwords. Some companies replied that users
are required to agree to the “conditions for use”
before downloading certain information, and thatpart of the online information is available for a fee.
Some companies whose members-only websites
require passwords mentioned that they offer
membership without examination, and simply
operate those sites as a part of their services.
Some other companies whose members-onlywebsites contain information protected bypasswords stated that such information isavailable only to the users who have undertaken asecrecy obligation by agreeing to the terms ofservice or otherwise declaring compliance. Someof these companies said that publicizing
information is not their purpose of using theInternet.
Regarding the preservation and storage ofthe former versions of online information after
they are deleted from the Internet, companies
replied that their technical reports tend to be
stored in hard copy, whereas some otherinformation is stored only in the form of digital
data in recording media or servers.

● 3 ●Ⅵ Domestic Surveys on the Usability,
Necessity, and Problems of theInformation
Storedin
Web
Archives from the Perspective ofPatent Examination
In order to analyze and discuss the usability,
necessity, and problems of the use of information
stored in a Web archive from the perspective ofpatent examination, a domestic questionnaire
survey and a domestic interview survey wereconducted on quasi-public standard-settingorganizations, which set technical standards andspecifications, and companies that publicize
various documents on the Internet such astechnical standards, specifications, brochures,manuals, technical reports, and other technicaldocuments.
In the survey, quasi-public standard-settingorganizations were asked what kind of problems
the JPO’s creation of a Web archive could cause.
They expressed various concerns that it would beundesirable to collect information without due
authorization if the information is protected andavailable only to qualified viewers as is the casewith a members-only website, that it would beundesirable for patent examiners to use online
documents that are still in preparation, and that, if
the JPO uses archived information for the
purpose of patent examination, the organizations
would be demanded verification of suchinformation.
Furthermore,quasi-publicstandard-setting organizations stated that, while
standards and specifications are publicized forwide use, those documents and other information
publicized on their websites are not prepared forcrawling by a Web archive system for use bypatent examiners.
On the other hand, companies were asked
whether the JPO should take the initiative increating a Web archive. They expressed various
opinions: that the JPO should take such initiative,that the creation of a Web archive should bepermitted only if there are legal grounds forarchived information, that the Web archive
creation should be permitted only if the archive
will provide public access, that the archive
creation should be permitted only after it isproved to be cost-effective, that the archive
creation should be permitted only if the contents
are appropriate, and that the archive creation
should not be permitted.
Regarding the types of information to bearchived, some companies stated that examiners
would benefit from the archived information on

standards and specifications in the fields ofinformation, telecommunications and electricity,
and also from the information on business models
and software-related matters. Other companies
pointed out that the technical information is
publicized on corporate websites only after thefiling of a relevant patent application or thedisclosure of said technical information in an
academic meeting, an exhibition, or through the
distribution of brochures or any other form of
hard copy. Some companies mentioned that, as far
as standards and specifications are concerned, itwould be sufficient to request standard-settingorganizations to preserve or submit necessary
information.
To the question as to what kind of problems
the JPO’s creation of a Web archive could cause,
companies pointed out various problems bysaying that, if an online document is used bypatent examiners, which date, the date of storage
in the archive or the date stated on the archived
document, should be regarded as the date on
which the document becomes publicly known,
that, since corporate websites are modified fromtime to time, whether different treatment should
be given to the modified information before andafter the modification and to the information
deleted from the Internet for one reason or
another, and that, if an archived online document
is cited as a reason for refusal of a patentapplication filed in Japan, whether the effect ofsaid document extends to a foreign application.
With regard to public access, many companies
expressed their concerns that a problem would
occur when an archive containing informationcollected from corporate websites is made public,
if the archive contains copyrighted works whose
secondary use is prohibited by contract. With
regard to the issue of whether the JPO is
permitted to provide the public with online accessto the archive containing information collectedfrom corporate websites, some companies
mentioned that the JPO would not be given suchpermission because it is too troublesome to checkthe contractual conditions of each document,
whereas other companies replied that their stancetoward this issue has not been decided at thispoint of time. In response to the question as towhether they would use the archived information
if publicized by the JPO, many companies
answered that they would use the information,
indicating needs for public access.
If no public access is provided to the archived
information, a company that receives a notice of
reasons for refusal of a patent application may not● 4 ●IIP Bulletin 2010

be able to confirm the information contained in
the notice by conducting an online search. In thissituation, the reliability of the publication date
and the non-falsification of the information cannot
be verified. In the survey, companies were asked
what would be necessary to verify the
information. Some companies answered that the
information could be verified by the index
information disclosed in advance and by a timestamp, while other companies replied that they
could be convinced of the validity of theinformation if the time stamp is certain, or thatthey would find the information to be valid if theinformation consists of standards or technicalreports and has been archived by a reliability
system.
Furthermore, some companies pointed outthat the JPO is expected to give a detailed
explanation about its operation policy, and that itis desirable to discuss, in advance, various issues
such as the treatment of information that has
been publicized for a very short period of time
and the conditions under which the archived
information is made available to foreign patentoffices. Other companies mentioned that thearchive should be made available to the public.
On the other hand, some companies statedthat they would not be convinced of the validity of
the information contained in a notice of reasons
for refusal, for such reasons that, before filing apatent application, they conduct a comprehensive
prior art search at great expense in order toensure the absence of prior arts, or that thenondisclosure of the archived information would
violate the spirit of the patent system designed topromote disclosure of new technology. Someother companies pointed out that, if online
information of another company is cited, it would
be impossible to verify the status of the prior art
document before filing an objection.
Some companies stated that, while eachapplicant is required to conduct a prior art search,even if the index information discloses which
websites are subject to crawling, it would be too
costly and unrealistic for a company toindependently archive information collected fromthe sites from time to time and therefore that, if
the archived information does not become
available to the public, the JPO should explain
why no public access is provided and why anapplicant is given no means to learn, at the timeof filing an application, that the prior art
document is publicly known.

IIP Bulletin 2010

Ⅶ Issues and Points of Concern
with Respect to the JPO’s
Planned Web Archive
1

Issues(1) Weight of evidence of an archived
online document
Unlike documents published in hard copy,archived online documents carry no information
about their respective publication dates.
Moreover, falsification is hard to detect due to theabsence of a trace of falsification of analog
information, such as a trace of overwriting by ink
that would remain. For these reasons, opinions
are divided over what kind of archive system isnecessary to convince a judge to believe, with areasonable level of certainty, that the publication
date of an archived online document is reliable
and that said document is not falsified. In otherwords, how to prove that the archived document
really existed in the past and underwent nofalsification so that a judge would be convinced of
the reliability of the archived document.
Currently, the JPO plans to create a Web
archive system described in Chapter I, Section 2
above, and to store the collected information in anelectromagnetic recording medium (e.g., HDD).
Since human-beings can neither perceive,
read, nor understand the contents of theinformation stored in an electromagnetic
recording medium, opinions have been divided
over how to treat such information under the
Code of Civil Procedure. According to a stanceadopted by a relatively large number of courts, a
printed-out version of an online document is
considered to be the original document. In a trial,
the original document will be subject toexamination of documentary evidence. The
weight of evidence of the document should be
examined from two perspectives. The first
perspective is whether the content of the
document is an expression of an idea of the author.
This is called the weight of formal evidence. The
second perspective is to what extent the content
of the document contributes to proving the factthat constitutes a subject matter of substantiation.
This is called the weight of substantial evidence.
While some people might argue that further
examination would be necessary, the recent trend
in reality shows that courts consider the weight offormal evidence to be a nonissue in most cases.
This is because the process of printing out an
online document stored in an electromagnetic
recording medium mostly consists of automated● 5 ●information processing activity by a computer.
Therefore, it is likely that the issue is considered
to lie in the weight of substantial evidence.
When a Web archive system is utilized, adispute could arise with regard to the content ofan archived online document or the index or timestamp affixed to it, more specifically, with regard
to (i) the accuracy of the information in the phaseof collection and recording, (ii) the accuracy of theinformation in the phase of storage after thephasesofcollection
andrecording(non-falsification), (iii) the accuracy of theinformation in the phase of print-out after phasesof collection, recording, and storage (Before being
collected by a Web archive system, theinformation might have been falsified already.
Such issue of falsification at source is notdiscussed in this paper because this issue is notunique to Web archives.).
When an archived document is used in a trial,
the judge will examine the form of the document
and take into consideration other factors notdirectly related to the document, and evaluate theweight of substantial evidence under the principleof free conviction (probative value). In a trial, theweight of evidence of an archived document might
be questioned from the following perspectives.
First, there is a possibility that the Web archive
system itself contains an error or inaccuracy andcauses a problem in any of the phases describedin (i) to (iii) above. In other words, the issue liesin the reliability of the system itself. Second,
there is also a possibility that a person involved in
the project of a Web archive system makes anintentional alteration. This is the issue of theestablishment of a system to prevent those
involved in the project from making such analteration. It is also an issue of personnel
management such as the education of the people
concerned. Third, there is a possibility that an
outside third party makes an intentional alteration
especially in the phase of storage mentioned in(ii) above. This is also the issue of theestablishment of a security system to prevent analteration to the archive system.
Based on the possibilities presumed above, itwould be important to check (1) whether the Web
archive system is automated and accurate in all
the three phases (i) to (iii) described above andwhether the system is functioning without errors
in reality, (2) what is the level of security that the
security system is designed to provide andactually provides in order to prevent falsificationin any of the three phases (i) to (iii), especial in
the phase of storage of information?, (3) whether

an appropriate system has been established toprevent those involved in the project of the Web
archive system from committing an act offalsification by providing them with necessary
education and whether such a system designed to
avoid human-caused risks is actually functioning.
Generally speaking, if a Web archive system
is designed to function automatically in thephases (i) to (iii), the possibility of intentional
alteration of archived information would be small.
This empirical rule would positively affect theformation of a court’s determination. However if
the design of the Web archive system contains anerror or if an archived document comes with afalse publication date, the reliability of said
system would plummet as a whole and would
negatively affect the formation of a court’s
determination. In addition to these factors, thecourt would take into consideration various
factors disclosed in the trial before forming adetermination with regard to the weight ofevidence of the archived online document.
With the aforementioned points in mind, the
JPO should design a Web archive system, operate
it as designed, and try to avoid human-caused
risks. An online document archived by such asystem would be accepted as evidence by a court.
The discussion made in this section so far
has focused on the current judicial practice inJapan. The practice could change if the Code ofCivil Procedure is revised in the future. The
judicial practices in other countries need to be
discussed separately.
(2) “Publicly Known”
Since it is easy to post information on theInternet, a company sometimes mistakenly posts
erroneous information or information notintended for online disclosure, and immediately
deletes it afterward.
In this way, if information is publicized on theInternet for a very short period of time, an issue
would arise as to whether it is reasonable for a
Web archive system to fixate the information andprovide the information for use by examiners.
In Chapter II, Section 5 of the Examination
Guidelines for Patent and Utility Model in Japan,
it is stated that, even if the electronic technicalinformation appears on the Internet, information
would not be considered to be available to the
public “if the information is not published longenough to be accessed by the public (e.g.
information published on the Internet for a shortperiod of time).” While examination must be
conducted in accordance with these Guidelines, a● 6 ●IIP Bulletin 2010

dispute might arise as to what exactly a “shortperiod of time” means.
It would be meaningful to discuss this issue
from the perspective of whether a Web archive
system should be designed to collect information
by crawling multiple times on a periodical basis. It
should be noted that the Examination Guidelines
for Patent and Utility Model in Japan mentions“information published on the Internet for a shortperiod of time” merely as an example of“information that would not be considered to beavailable to the public.” In practice, examiners
may use any information on the Internet as longas it is available as of the time of examination.
The length of online presence of the information
would be a nonissue in most cases. Therefore, thedefinition of a “short period of time” remains
unclear. Further study would be necessary as to
how to apply the guideline “information that is
not published long enough to be accessed by the
public” to cases where an examiner uses
information that is not available on the Internet asof the time of examination but only stored in a
Web archive.
Hence, this point would become a major
issue if the information stored in the JPO’splanned Web archive is not available to third
parties.
(3) Other issues (disclosure to third parties)
Other issues include the issue of whether tomake the JPO’s planned Web archive available tothird parties.
According to the results of the questionnaire
survey and the interview survey, there are needs
for the disclosure of the archived information tothird parties. However, before the archived
information is disclosed to third parties throughthe Internet, it would be necessary under Article
23 of the Copyright Act to obtain from the senderof the information (the copyright holder) a licenseof the right of public transmission. The JPO has
faced the same hurdle in the course of building adesign database and a computer software database(CSDB) containing publicly-known materials
posted on the Internet. The JPO has experienced
difficulty in obtaining such licenses for thedisclosure of those databases to third parties. The
difficulty would even increase in the case of
information publicized on corporate websites
because, in some cases, the secondary use of awork is prohibited by a contract concluded withthe copyright holder. In view of these facts, somecompanies stated that the grant of a license of theright of public transmission would be difficult,

IIP Bulletin 2010

because it would be excessively burdensome tocheck the contractual conditions of each work.
If the information stored in the JPO’s planned
Web archive is not disclosed to third parties, apatent applicant might find his/her application
rejected by the JPO based on information
unobtainable by a prior art search conducted
before the filing of the patent application.
Patent applicants file their applications after
conducting prior art searches at great expense, inorder to ensure the absence of prior art
documents. They make significant amounts ofinvestments in research and development
activities, on the presumption that they will beable to obtain necessary patent protection. The
JPO also requires each applicant to conduct aprior art search before the filing of an application.
For these reasons, many companies arerequesting the disclosure of the JPO’s planned
Web archive.
Therefore, as pointed out by some
respondents of the interview survey mentioned
above, it would be appropriate to make efforts todisclose the information archived by the JPO.
Necessary legal reforms such as amendment of
the Copyright Act should be made if necessary. If
so, while part of the archived information should
be made available to the public for free, it might
be reasonable to charge users for access to all theinformation stored in the archive. In this regard,
further study would be necessary.
2

Points of Concern(1) Points of concern with respect to thephase of information collection(i) Treatment of information protected by apassword or provided for a feeInsomecases,
password-protected
information is posted on the Internet not for use
by the general public but for use by certain
members only. Some information is posted on theInternet for viewing by any person who pays a fee,including non-members. Other information is soldin the form of hard-copy booklets, but is read-onlyaccess available on the Internet for free without apassword.
It is especially needed to consider how totreat information that is posted on the Internet
not for viewing by the general public. Even if
information is posted on the Internet for the
purpose of public disclosure, the conditions fordisclosure, i.e., whether it is protected by apassword or whether it is provided for a fee, maydiffer depending on the sender of the information.

● 7 ●Therefore, in anticipation of the creation of a Web
archive system, further study needs to be made inorder to determine how to treat information
protected by a password or provided for a fee.
(ii) Resistance to crawlingSome of the quasi-public standard-settingorganizations and the companies participated in
the interview survey and the questionnaire
survey do not have websites in the anticipationthat the information contained in a website would
be subject to crawling carried out by a Web
archive system. Some companies that haveexperience in filing patent applications are notfully aware of the existence of Web archive
services (e.g., Wayback Machine). Somecompanies are not aware of the JPO’s plan tocreate a Web archive system.
Neither the quasi-public standard-settingorganizations nor the companies were given
detailed explanation about the JPO’s planned Web
archive system with respect to the scope,principle, and grounds of crawling conducted by
the archive system, nor about the use of thecollected information by patent examiners. As aresult, they are feeling various concerns and asense of resistance to the JPO’s plan to collectpublicly-available information on the Internet bycrawling through websites and to use it for patentexamination. Appropriate measures should betaken to alleviate their concerns.
(2) Points of concern with respect to thephase of patent examination(i) Date on which the document becomespublicly known
In Chapter II, Section 5 of the Examination
Guidelines for Patent and Utility Model in Japan,
it is specified “The question of whether or not the
information was made available before the filingof the application is judged based on the time of
publication indicated in the cited electronic
technical information.” In the case of an online
document stored in the JPO’s planned archive, itis necessary to clarify which date, whether thedate on which the document is collected by the
Web archive system or the publication dateindicated on said document, should be regarded as
the date on which the document becomes publicly
known.

(ii) Treatment of information before and after amodification, and information deleted forsome reason
Online information is modified from time totime. Therefore, it would be needed to discuss
how patent examiners should treat information
before and after a modification, and information
deleted for some reason. The discussion should
cover such issues as whether the sender of
information should be given an opportunity torequest the deletion or modification of thearchived information. This issue should be
discussed with special attention to the risk ofproviding the sender of information with thepower to delete information at its own discretion.
(3) Necessity for harmonization with otherpatent offices regarding use of archived
information
As pointed out in the interview survey, it
would be necessary to examine, in detail, howpatent offices in the U.S. and European countries
use the documents stored in Web archives. In
particular, it would be demanded to thoroughly
discuss how patent offices in the U.S. andEuropean countries and other countries should
use the information stored in the JPO’s planned
Web archive. Such discussion should be held inforums such as the Annual Trilateral Conferenceof the patent offices of Europe, the U.S. and Japan,
in order to seek harmonization of patentexamination practices.

Ⅷ Conclusion
The purpose of this study is to provide abasis for further discussion on how the
information on advanced technology stored in a
Web archive should be used in the course of
examination.
Web archive services have been alreadyprovided by some private organizations. One suchservice is the Wayback Machine, which isoperated by an NPO in the U.S. called Internet
Archive. Information archived in the Wayback
Machine has been used by examiners of the
USPTO, the UK-IPO, the DPMA, and the EPO,
for the purpose of verifying the date on which a
certain web page became available to the public.
There have been disputes over the reliability of
information stored in the Wayback Machine. The
patent offices’ trial decisions and court judgments,
etc., on the issue of reliability vary from one caseto another.

● 8 ●IIP Bulletin 2010

The JPO will face various issues in thecourse of creating a Web archive containing
information on advanced technology and using thearchived information in the course of patentexamination. For example, if an online document
archived in the JPO’s Web archive is submitted toa court, the weight of evidence of the document
could be questioned by the court. In this paper,
the issue of the weight of evidence has been
discussed from the perspective of what kind ofarchive system is necessary to convince a judge
to believe, with a reasonable level of certainty,
that the publication date indicated on the archived
document is reliable and that the document was
not falsified, in other words, how to prove that thearchived document really existed in the past andunderwent no falsification so that a judge would
be convinced of the reliability of the archived
document.
Furthermore, with respect to “publicly
known”, it has been pointed out that the
publication of information on the Internet for avery short period of time would raise an issue as
to whether it is reasonable for a Web archive
system to fixate the information and provide theinformation for use by examiners. This paper has
examined this issue and identified other major
issue and some points of concern.
With regard to the weight of evidence of an
online document stored in a Web archive, adispute could arise with regard to the content of
the archived online document or the index or timestamp affixed to it, more specifically, with regard
to (i) the accuracy of the information in the phaseof collection and recording, (ii) the accuracy of theinformation in the phase of storage after thephasesofcollection
andrecording(non-falsification), (iii) the accuracy of theinformation in the phase of print-out after phasesof collection, recording, and storage.
When an archived document is used in a trial,
the judge will examine the form of the printed-out
version of the document and take into
consideration other factors not directly related tothe document, and evaluate the weight ofsubstantial evidence under the principle of freeconviction (probative value). It would be
important to check (1) whether the Web archive
system is automated and accurate in all the threephases (i) to (iii) described above and whether thesystem is functioning without errors in reality; (2)what is the level of security that the security
system is designed to provide and actuallyprovides in order to prevent falsification in any of
the three phases (i) to (iii), especially in the phase

IIP Bulletin 2010of storage of information, etc.?; (3) whether anappropriate system has been established toprevent those involved in the project of the Web
archive system from committing an act offalsification by providing them with necessary
education and whether such a system designed to
avoid human-caused risks is actually functioning.
Generally speaking, if a Web archive system
is designed to function automatically in thephases (i) to (iii), the possibility of intentional
alteration of archived information would be small.
This empirical rule would positively affect theformation of a court’s determination. However if
the design of the Web archive system contains anerror or if an archived document comes with afalse publication date, the reliability of said
system would plummet as a whole and would
negatively affect the formation of a court’s
determination. In addition to these factors, thecourt would take into consideration various
factors disclosed in the trial before forming adetermination with regard to the weight ofevidence of the archived online document.
With the aforementioned points in mind, the
JPO should design a Web archive system, operate
it as designed, and try to avoid human-caused
risks. An online document archived by such asystem would be accepted as evidence by a court.
The discussion made in this section so far
has focused on the current judicial practice inJapan. The practice could change if the Code ofCivil Procedure is amended in the future. The
judicial practices in other countries need to be
discussed separately.
With respect to “publicly known”, if
information is publicized on the Internet for avery short period of time, an issue would arise as
to whether it is reasonable for a Web archive
system to fixate the information and provide theinformation for use by examiners. With regard to
the issue of whether the information that is
publicized on the Internet for a very short periodof time may be regarded as publicly-available
information, the current Examination Guidelines
for Patent and Utility Model in Japan simply
mentions “the information that is not publishedlong enough to be accessed by the public (e.g.
information published on the Internet for a shortperiod of time).” merely as an example of“information that would not be considered to beavailable to the public.” Further study would benecessary as to how to apply the guideline“information that is not published long enough tobe accessed by the public” to cases where an
examiner uses information that is not available on● 9 ●the Internet as of the time of examination but
only stored in a Web archive.
Furthermore, with regard to an online
document stored in the JPO’s planned archive, itis necessary to clarify which date, whether thedate on which the document is collected by the
Web archive system or the publication dateindicated on said document, should be regarded as
the date on which the document becomes publicly
known.
It is common that online information ismodified from time to time. Therefore, it would
be needed to discuss how patent examiners
should treat information before and after amodification, and information deleted for somereason.
Moreover, as pointed out in the interview
survey, it would be necessary to examine, indetail, how the patent offices in the U.S. andEuropean countries use the documents stored in
Web archives.
Both the senders of information andapplicants should be given a detailed explanation
about the JPO’s planned Web archive system withrespect to the purpose, subject matters, scope,method, grounds, etc., of crawling conducted by
the archive system, and also about the use of theachieved information by patent examiners.
The senders of information mentioned that
information on their websites are not prepared forcrawling by a Web archive system for use bypatent examiners. Since the conditions fordisclosure, i.e., whether it is protected by apassword or whether it is provided for a fee, maydiffer depending on the sender of the information,
detailed discussion and advance notice would benecessary.
On the other hand, applicants should begiven a detailed explanation in advance about thecontents of the archive and the operation policy
with respect to the use of the archived
information by patent examiners. Web archives
themselves are not widely known, but many
applicants request the disclosure of theinformation collected by the JPO’s planned Web
archive system. As shown in the results of theinterview survey, it would be appropriate to makeefforts to disclose the information archived by the
JPO. Necessary legal reforms such as the revisionof the Copyright Act should be made if necessary.
In anticipation of the JPO’s creation of a Web
archive, further efforts should be made to discussand contemplate relevant issues, points ofconcern, etc., so as to establish an archive systemthat will increase the accuracy of patentexamination and thereby contribute to industrial
development.
(Reseacher: Miki OBI)

● 10 ●IIP Bulletin 2010