IP Law Bulletin

In July of 1994, Dr. Lister registered with the United States Copyright Office a manuscript describing a method of playing golf in which players use a golf tee on any shot that is not in a designated hazard area or on a green. Later learning that his copyright registration would not protect any potential invention, he filed a patent application directed to his method in August of 1996.

Following several rounds of rejections and amendments, including two appeals to the Board of Patent Appeals and Interferences, the Federal Circuit decided whether Dr. Lister’s registration of his manuscript with the U.S. Copyright Office qualified as prior art under 35 U.S.C. § 102(b) against his own patent application. The Board previously overturned a rejection under 35 U.S.C. § 102(a) that relied on Lister’s manuscript because it was held that an inventor’s own manuscript cannot be prior art under 35 U.S.C. § 102(a). ¹

The parties did not dispute the existence or the date of Dr. Lister’s copyright registration for his manuscript. The parties also did not dispute that the manuscript disclosed the claimed invention. The parties did dispute whether the manuscript was publicly accessible.

Generally, a publication is considered publicly accessible if it is available to persons interested and having ordinary skill. A publication does not need to have actually been accessed to be considered publicly accessible. Further, convenience is not a factor in determining public accessibility. While cases involving disclosures stored in libraries have held that a reference must be cataloged, indexed, and shelved in a meaningful way to provide public accessibility, cataloging and indexing is not a requirement of public accessibility.

Dr. Lister’s manuscript was available to the public both through the U.S. Copyright Office, and through private databases provided by Westlaw and Dialog. In the present case, it was determined that the access provided by the U.S. Copyright Office was not sufficient to be considered publicly accessible because it did not allow for searching in a meaningful way. At the time, searching of U.S. copyright registrations could only be performed by searching the last name of an author or the first word of a title. The Westlaw and Dialog databases, on the other hand, were considered publicly accessible because they allowed for keyword searches of the title (but not the full text) that would have allowed an interested person having ordinary skill to locate Dr. Lister’s manuscript.

Although the Westlaw and Dialog databases were considered publicly accessible, the rejection could not be maintained because the examiner was unable to establish when Dr. Lister’s manuscript was made available for search by either Westlaw or Dialog. Further, the evidence did not contain any information related to the general procedures practiced by Westlaw and Dialog for cataloging copyright registrations. In view of prior “thesis” cases that relied on general procedures to prove a likely publication date, it is likely that such information would have been sufficient to prove a likely date by which Dr. Lister’s manuscript was made available for search by either Westlaw or Dialog.

Comparing the situation to one in which an examiner finds a reference on the Internet but is unable to prove when the reference first appeared on the Internet, the Federal Circuit determined that Dr. Lister’s reference could not be relied upon to reject Dr. Lister’s patent application under 35 U.S.C. § 102(b) without first establishing that it was publicly accessible on either Westlaw or Dialog more than a year prior to the filing date of Dr. Lister’s patent application. The Board’s decision was thus vacated and remand ordered.

Despite the favorable decision for Dr. Lister in this particular aspect of his prosecution, we do not believe this case should change the behavior of those filing patent applications. Potential patentees should remain cautious with any publications they make that could include disclosures of potential inventions. As our readers know, the public disclosure of an invention begins the one year window in which patent applicants have to file a patent application in the United States and terminates the opportunity patent applicants have to file a patent application in most every other country. Pinning one’s hopes to some other organization’s publication policies is generally not prudent. Thus, applicants benefit from filing an application before, or at the very least within one year of, any public disclosure that could possibly be construed as disclosing aspects of a potential invention.

 ¹ An inventor cannot disclose his or her own invention before he or she invents it.  Thus, 35 U.S.C. § 102(a) requires disclosure by another  that would provide evidence that a patent applicant is not the first to invent.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.