Fore! Court Takes Swing At Printed Publications As Bars To Patentability

Jan. 4, 2010 - PRLog -- The Federal Patent Act prohibits the patenting of an invention that was described in a printed publication more than one year before its patent application is filed. But what is a “printed publication”? In this case, an inventor argued that his rejected manuscript did not qualify as a printed publication because no evidence indicated it was included in a catalog or index at that time that would have allowed an interested party to locate it. A sidebar lists three similar cases.

In re Lister, No. 09-1060, 2009 (Fed. Cir.); In re Hall, 781 F.2d 897, 1986 (Fed. Cir.); In re Bayer, 568 F.2d 1357, 1978 (CCPA); In re Cronyn, 890 F.2d 1158, 1989 (Fed. Cir.)

The Federal Patent Act prohibits the patenting of an invention that was described in a printed publication more than one year before its patent application is filed. But what qualifies as a “printed publication”? The U.S. Court of Appeals for the Federal Circuit recently considered this question in the case of In re Lister.

Teeing off

Richard Lister is a golfer who grew frustrated with the slow pace of the game. He developed a method of playing golf that allowed players to tee up every shot except those from designated hazard areas and putting greens. He described the method in a manuscript titled “Advanced Handicap Alternatives for Golf.”

Lister submitted the manuscript to the U.S. Copyright Office on July 4, 1994, and obtained a certificate of registration on July 18, 1994. He subsequently learned that he actually needed a patent, not a copyright. Lister filed a patent application on Aug. 5, 1996. After several rounds with the patent examiner and the Board of Patent Appeals and Interferences, the Board ultimately affirmed rejection of the application under Section 102(b) of the Patent Act.

Reviewing the rules

Sec. 102(b) bars patentability if the invention “was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” To qualify as a printed publication, a reference to the invention must have been sufficiently accessible to the public interested in the invention. Such a publicly accessible reference can be located and examined by persons interested and ordinarily skilled in the subject matter exercising reasonable diligence.

On appeal, Lister argued that his manuscript wasn’t sufficiently available for inspection. He further argued that the manuscript did not qualify as a printed publication as of the critical date — one year before the filing of his patent application — because no evidence indicated it was included in a catalog or index at that time that would have allowed an interested party to locate it.

Approaching the green

The court quickly concluded that Lister’s manuscript was indeed sufficiently publicly available for inspection at the Copyright Office, but availability did not end the inquiry. The court also considered whether anyone would have been able to learn of the manuscript’s existence and potential relevance before the critical date.

The manuscript was included in three databases — the Copyright Office’s automated catalog and two commercial databases. The latter, Westlaw and Dialog, obtain the automated catalog data and enter it into their own databases. The automated catalog wasn’t sorted by subject matter and was searchable only by the author’s last name (for example, “Lister”) or the first word of the work’s title (for instance, “Advanced”). Users of the commercial databases, however, could perform keyword searches of the titles, but not the full texts, of works.

Lister contended that none of the databases indexed or cataloged the manuscript in a “meaningful way” that would allow a researcher to locate it. The court, however, found that the question was not whether an individual, selecting terms from the patent claim language, could execute a single keyword search that would yield all relevant references. The proper inquiry was whether the reference at issue could be located by persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence.

The court determined that a reasonably diligent researcher would have conducted keyword searches for a combination of “golf” and “handicap,” making the manuscript publicly accessible as of the date it was included in either commercial database. The court, however, found that the government failed to meet its burden of showing that the manuscript was, in fact, in either database more than a year prior to the filing date of the patent application.

Specifically, the government did not provide any evidence of the typical time that elapses between copyright registration, inclusion in the Copyright Office’s automated catalog and subsequent incorporation into the commercial databases.

Getting a mulligan

The court held that the record didn’t contain sufficient evidence that the manuscript was publicly accessible as of the critical date. It vacated the Board’s decision and remanded for further proceedings, providing Lister with another shot at a patent.

Sidebar: 3 previous cases considered by the court

In the case of In re Lister (see main article), the U.S. Court of Appeals for the Federal Circuit considered three previous decisions that addressed whether references stored in libraries were publicly accessible:

1. In re Hall. In this case, the court held that a dissertation shelved in the stacks and indexed in the catalog at a university library was a printed publication.

2. In re Bayer. Here the court found that a thesis was not publicly accessible as of the critical date because it was uncataloged and unshelved.

3. In re Cronyn. In this decision, the court noted the discrepancy in accessibility between the references in Hall and Bayer. It considered a thesis housed in the main campus library and the chemistry department library at a college. Each library contained a collection of student theses and a set of index cards that listed only the title and author of each thesis. The court held the theses were not publicly accessible because they weren’t cataloged or indexed in a meaningful way.

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