2128 “Printed Publications” as Prior Art
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I. A REFERENCE IS A “PRINTED PUBLICATION” IF IT IS ACCESSIBLE TO THE PUBLIC
A reference is proven to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”
Starlight Archery argued that Carella’s patent claims to an archery sight were anticipated under pre-AIA 35 U.S.C. 102(a) by an advertisement in a Wisconsin Bow Hunter Association (WBHA) magazine and a WBHA mailer prepared prior to Carella’s filing date. However, there was no evidence as to when the mailer was received by any of the addressees. Plus, the magazine had not been mailed until 10 days after Carella’s filing date. The court held that since there was no proof that either the advertisement or mailer was accessible to any member of the public before the filing date there could be no rejection under pre-AIA 35 U.S.C. 102(a).
When a document is cited in a rejection of a claim in an examination of a patent application or during an reexamination proceeding, an applicant or patent owner may challenge its public availability and/or the date it became publicly accessible, even when the document itself contains a publication date, by filing a proper affidavit or declaration under 37 CFR 1.132 that includes facts and evidence to support the applicant or patent owner's position.
II. ELECTRONIC PUBLICATIONS AS PRIOR ART
A. Status as a "Printed Publication"
An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates.
Pages from a website were relied on by defendants as an anticipatory reference (to no avail), however status of the reference as prior art was not challenged.
Database printouts of abstracts which were not themselves prior art publications were properly relied as providing evidence that the software products referenced therein were “first installed” or “released” more than one year prior to applicant’s filing date.
The Office policy requiring recordation of the field of search and search results weighs in favor of finding that Internet and on-line database references cited by the examiner are “accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.”
Office copies of an electronic document must be retained if the same document may not be available for retrieval in the future.
B. Date of Availability
Prior art disclosures on the Internet or on an on-line database are considered to be publicly available as of the date the item was publicly posted.
Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) or (b).
- However, it may be relied upon to provide evidence regarding the state of the art. Examiners may ask the Scientific and Technical Information Center to find the earliest date of publication or posting.
C. Extent of Teachings Relied Upon
An electronic publication, like any publication, may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art.
- Note, however, that if an electronic document which is the abstract of a patent or printed publication is relied upon in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103, only the text of the abstract (and not the underlying document) may be relied upon to support the rejection.
In situations where the electronic version and the published paper version of the same or a corresponding patent or printed publication differ appreciably, each may need to be cited and relied upon as independent references based on what they disclose.
D. Internet Usage Policy
E. Wayback Machine
The Wayback Machine® is a digital library maintained by the Internet Archive (a non-profit organization) for viewing information on archived digital Internet webpages.
F. Social Media
Social media websites on the Internet, such as YouTube, Twitter, Facebook, and public forum posts, can be a source of prior art, provided the public accessibility requirements, as laid out in subsection I are met.
- Thus, all information on social media is not necessarily publically accessible.
- Public accessibility is determined on a case-by-case basis taking into consideration factors such as, where the information is posted, privacy restrictions placed on the posting, the length of time it was posted, and whether the information is indexed for searching.
III. EXAMINER NEED NOT PROVE ANYONE ACTUALLY LOOKED AT THE DOCUMENT
One need not prove someone actually looked at a publication when that publication is accessible to the public through a library or patent office.
2128.01 Level of Public Accessibility Required
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The statutory phrase "printed publication" has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was "published."
I. A THESIS PLACED IN A UNIVERSITY LIBRARY OR A DOCUMENT PLACED IN AN ONLINE DATABASE MAY BE PRIOR ART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC
A doctoral thesis indexed and shelved in a library is sufficiently accessible to the public to constitute prior art as a “printed publication.”
- Even if access to the library is restricted, a reference will constitute a “printed publication” as long as a presumption is raised that the portion of the public concerned with the art would know of the invention.
II. ORALLY PRESENTED PAPER CAN CONSTITUTE A “PRINTED PUBLICATION” IF WRITTEN COPIES ARE AVAILABLE WITHOUT RESTRICTION
A paper which is orally presented in a forum open to all interested persons constitutes a “printed publication” if written copies are disseminated without restriction.
- An oral presentation at a scientific meeting or a demonstration at a trade show may be prior art under 35 U.S.C. 102(a)(1)’s provision: “otherwise available to the public.”
III. INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT “PRINTED PUBLICATIONS”
Documents and items only distributed internally within an organization which are intended to remain confidential are not “printed publications” no matter how many copies are distributed.
- There must be an existing policy of confidentiality or agreement to remain confidential within the organization. Mere intent to remain confidential is insufficient.
Research reports disseminated in-house to only those persons who understood the policy of confidentiality regarding such reports are not printed publications even though the policy was not specifically stated in writing.
“While distribution to government agencies and personnel alone may not constitute publication ... distribution to commercial companies without restriction on use clearly does.”
Four reports on the AESOP-B military computer system which were not under security classification were distributed to about fifty organizations involved in the AESOP-B project. One document contained the legend “Reproduction or further dissemination is not authorized.” The other documents were of the class that would contain this legend. The documents were housed in Mitre Corporation’s library. Access to this library was restricted to those involved in the AESOP-B project. The court held that public access was insufficient to make the documents “printed publications.”
IV. PUBLICLY DISPLAYED REFERENCES CAN CONSTITUE A ‘PRINTED PUBLICATION’ EVEN IF THE REFERENCES ARE NOT DISSEMINATED BY COPIES OR INDEXED IN A LIBRARY OR DATABASE
A publicly displayed document where persons of ordinary skill in the art could see it and are not precluded from copying it can constitute a “printed publication,” even if it is not disseminated by the distribution of reproductions or copies and/or indexed in a library or database.
- “The key inquiry is whether or not a reference has been made ‘publicly accessible.’” Prior to the critical date, a fourteen-slide presentation disclosing the invention was printed and pasted onto poster boards.
- The printed slide presentation was displayed with no confidentiality restrictions for approximately three cumulative days at two different industry events.
The court noted that “an entirely oral presentation at a scientific conference that includes neither slides nor copies of the presentation is without question not a 'printed publication' for the purposes of [pre-AIA] 35 U.S.C. § 102(b).
- Furthermore, a presentation that includes a transient display of slides is likewise not necessarily a ‘printed publication.’”
In resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a “printed publication” under pre-AIA 35 U.S.C. 102(b), the court considered the following factors:
- “the length of time the display was exhibited, the expertise of the target audience,
- the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied,
- and the simplicity or ease with which the material displayed could have been copied.”
Upon reviewing the above factors, the court concluded that the display “was sufficiently publicly accessible to count as a ‘printed publication.’” (a video that accompanied oral presentations in Austria, Belgium, France, and Italy was held not a printed publication).
Note that an oral presentation at a scientific meeting or a demonstration at a trade show may be prior art under 35 U.S.C. 102(a)(1)’s provision: “otherwise available to the public.
2128.02 Date Publication Is Available as a Reference
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DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF ROUTINE BUSINESS PRACTICES
Evidence showing routine business practices can be used to establish the date on which a publication became accessible to the public.
Specific evidence showing when the specific document actually became available is not always necessary.
Court held that evidence submitted by Intel regarding undated specification sheets showing how the company usually treated such specification sheets was enough to show that the sheets were accessible by the public before the critical date.
Librarian’s affidavit establishing normal time frame and practice for indexing, cataloging and shelving doctoral theses established that the thesis in question would have been accessible by the public before the critical date.
A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMES AVAILABLE AS PRIOR ART ON DATE OF IT IS RECEIVED BY A MEMBER OF THE PUBLIC
A publication disseminated by mail is not prior art until it is received by at least one member of the public.
- Thus, a magazine or technical journal is effective as of the date when first person receives it, not the date it was mailed or sent to the publisher.
