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Public Accessibility Prior to Patent
By Stuart K. Tubis – Edited by Caity Ross

In re Lister, No. 2009-1060 (Fed. Cir. Sept. 22, 2009)
Slip Op.

The United States Court of Appeals for the Federal Circuit, siding with Dr. Lister, vacated and remanded the Board of Patent Appeals and Interferences decision, which had affirmed an examiner’s rejection of Dr. Lister’s patent application under 35 U.S.C. § 102(b).

The Federal Circuit held that the Board of Patent Appeals and Interferences erred in affirming the patent examiner’s rejection under 35 U.S.C. § 102(b). In so holding, the court determined that “persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence” could have located the disputed reference by using either the Westlaw or Dialog commercial databases, which permit keyword searches of reference titles. The court found that this provided sufficient support for a finding of public accessibility under § 102(b).  However, the court also found insufficient evidence that the reference “was in fact included in either Westlaw or Dialog prior to the critical date” of one year before application for patent, as required under § 102(b).

Patentcastle, Patently-O, and Patent Prospector provide overviews of the case, including some historical background.

Dr. Richard Lister is an avid golfer who identified a difficulty that casual golfers have with the rule that a tee may only be used on the first shot of each hole. He then created a method of play in which golfers were allowed “to tee up their balls on every shot except for those taken from designated hazard areas or the putting green.” Dr. Lister, acting pro se, submitted a manuscript entitled “Advanced Handicap Alternatives to Golf” to the U.S. Copyright Office. The Copyright Office issued a certificate of registration on July 18, 1994. Dr. Lister later learned he needed a patent for his invention and applied for one on August 5, 1996. According to 35 U.S.C. § 102(b), a person shall not be entitled to a patent if the invention was publicly accessible “more than one year prior to the date of the application for patent.” After review and appeals, the Board of Patent Appeals and Interferences affirmed an earlier § 102(b) rejection of the patent due to its prior public accessibility at the Copyright Office. The court rejected Lister’s claim that the manuscript was not accessible to the general public by virtue of its location at the Copyright Office. In so holding, the court stated that “a reference can be considered publicly accessible even if gaining access to it might require a significant amount of travel.” The court also noted that once accessibility is shown, it is not required to show that anyone actually accessed it.

Dr. Lister also argued that the catalogs and databases were not sufficiently searchable to enable a reasonable, interested researcher to discover the manuscript. The court concluded that, given these facts, the Copyright Office’s catalog alone would not be sufficient to support a finding of public accessibility, as it allowed searching by author or first title word only. However, the court did hold that Dr. Lister’s manuscript was “publicly accessible” through either Westlaw or Dialog databases, which permitted keyword searches of titles. The court then turned to the question of timing. It held that the § 102(b) rejection was incorrect. It found that the evidence failed to show that the manuscript was made publicly accessible “as of the critical date [of one year before patent application] nor suffices to prove a prima facie case of accessibility that would shift the burden to Dr. Lister.” The court thus vacated and remanded the prior rejection, calling for proceedings consistent with the opinion.

No dissent was included in the opinion.

This ruling suggests that Westlaw and Dialog searches of title keywords provide a much higher level of “public accessibility” for § 102(b) purposes than the Copyright Office’s capacity to search by author name or title first word only. However, this conclusion is fact dependant; thus, an article located only within the Copyright Office database with a unique and readily guessable first word in the title might provide sufficient “public accessibility.” The court also maintained a firm position on the evidence required to show the date of accessibility, and was unwilling to accept an inference of timing based on limited evidence.

Posted On Oct - 6 - 2009 Comments Off

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