Posts Tagged “Prior publication”

You’re probably familiar with the old FRAM oil filter tag line – “you can pay me now or you can pay me [much more] later“. I say essentially the same thing to my clients when the topic of prior art searching comes up. Of course, as their Director of IP I usually am saying “We can invest in prior art searching now or pay an attorney a lot more later.”

If your invention is worth patenting, if it will add value to your company in a unique way, then by definition some competitor will want to use your invention, either by infringing (and hoping to invalidate your patent if you sue) or by asking for a re-examination to bring in new prior art that you didn’t find and/or the patent examiner didn’t consider. In either case you will spend a lot of money – orders of magnitude more money – explaining away prior art that you didn’t know existed than you would have spent finding it yourself before filing.

Karen Hazzah, in her All Things Pros blog writing about a re-examination case, makes the same point:

But non-patent literature is much more common in reexaminations, where the requester has reason to spend a lot of money on a literature search. That leaves a lot more room to argue about the “printed publication” requirement. And since an in-force patent is at stake, it’s not surprising that the patentee digs really deep with its arguments, bringing up facts like [the lack of] ISBN numbers and sales receipts.

In the particular re-examination, the “requester” (viz., competitor) found prior art in a college professor’s self-published, loose leaf, “textbook” that he had used in his teaching. He had distributed it to about 600 pupils over the years and mentioned it in publications. He sold copies to anyone who asked, based on seeing those publications.

The patentee grasped at straws, arguing that this prior art wasn’t a “printed publication” within the meaning of the law because of its informal nature and distribution channel . But nothing in the law says prior art has to be produced by a traditional book or magazine publisher or be bound in any particular fashion; nothing in the law says you have to be able to get it on Amazon.

The spirit of the law only requires that a document has been disseminated or otherwise made available – to the extent that someone interested and ordinarily skilled in the subject matter, can, with reasonable effort, “locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.” In other words, a document is prior art if an interested party can reasonably get their hands on it.

This “textbook” is an extreme case, to be sure. What are the chances that you could find a similar, privately produced “textbook” that described your invention, given the 4000 colleges in the United States and the tens or hundreds of thousands of professors who have taught there? But as this case shows, if someone wants to invalidate your patent, they will spend the money to find the prior art.

If at all possible, you should pay for a prior art search… or you can pay me later!

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For the fourth consecutive Congress our legislators will attempt to pass reforms to our 60 year old patent laws. My sense is that this year it might actually pass, driven by Mom and apple pie…uuh I mean the (“no-cost”) job growth and competitiveness arguments. Of course, what’s good for one group of inventors may be problematic for another, so we’ll have to wait to see if the bill gets recycled once again or finally enacted.

A draft of the Patent Reform Act of 2011 is available online (http://judiciary.senate.gov/legislation/upload/BillText-PatentReformAct.pdf). Based on a summary at www.qmed.com, here are a few of my thoughts on the first of about a dozen changes.

The Act transitions the U.S. from the first-to-conceive-and-diligently-reduce-to-practice system to a first-inventor-to-file (FTF) system – I think this change is a benefit to everyone (except procrastinators), particularly with our (US) provisional application process which lets an inventor get an application on file quickly.

Everybody benefits by eliminating the cost and record keeping requirements needed to support an interference proceeding (which is how the “first-to-invent” determination was made, if needed). These costs and requirements were particularly burdensome for the small inventor since the primary evidence – the invention notebook – really needs a system behind it to prove its validity. The small or solo inventor is hard pressed to find people to “read and understand” his work on a regular basis or to have an independent system to provide incontrovertible evidence to support his witnesses’ testimony.

Furthermore, we know the small inventor may have to set his invention aside (to earn a living), bringing his “diligence” in reducing his invention to practice into question. With FTF the whole diligence question goes away. And I can make a fair argument that the first person to reduce a conceived invention to practice is the one who deserves the patent (instead of the current US rule that the conception part give you the priority). If invention is 1% inspiration and 99% perspiration, then the patent should go to the person best at doing the 99%!

In a related change, the Act seems (to my eye) to modify the US-only one year “grace period” for public disclosures such that only disclosures by the inventors are given the grace period. The current rule allows an inventor to file for a patent within one year of a public disclosure of his or her invention – no matter who makes the disclosure. If the disclosure comes from someone other than the inventor, the inventor can pull out his evidence that he was first to invent and proceed with his patent application. In the rest of the world, where there is no consideration of who invented first and thus no mechanism for examining the evidence, there is no grace period and any public disclosure is considered prior art to your application. The rule prevents a non-inventor from rushing to the patent office with an application based on the public disclosure. Clearly, in a FTF system, some rule is needed to block fast copy-cats from getting a patent on some other inventor’s work.

This new rule is a compromise between the current one year grace period for all disclosures here and the no grace period in virtually the rest of the world. I think this is a good compromise that the rest of the world could adopt. After all, if the public disclosure comes from the applicant it does not cast doubt that he was an inventor. Furthermore, one of the purposes of the patent system is to encourage inventors to share the details of their invention with society. Allowing public disclosure prior to filing furthers that goal.

I’ll comment on some of the other aspects of the (re)proposed Act in later posts.

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We’ve all hear the expression that a lawyer who acts as his own counsel has a fool for a client; well apparently that applies to doctors as well. Dr. Richard Lister, a psychologist, “invented” a new method of playing golf and filed for a copyright on a manuscript describing the method (essentially allowing golfers to use a tee for all shots from the fairways or rough) on July 4, 1994 under the misapprehension that the copyrighted document would protect his invention. That was foolish mistake number 1. Since he used an attorney to file for the copyright I’m assuming he did not explain clearly why he wanted the copyright.

More than 2 years later (8/96), after getting clued in that a patent, not a copyright, is needed to protect an invention, he filed a patent application on this method of playing golf. This was foolish mistake number 2, since it was unlikely that the patent would ever issue and perhaps even more importantly it was unlikely that any organization would start running Tee Golf Tournaments, leaving him to enforce his patent by chasing individual golf foursomes around the course to see if they use tees on the fairways.

Unsurprisingly, Dr. Lister has been unsuccessful these past 13 years in getting a patent issued; nevertheless he continues to spend money pursuing his dream. By my count, foolish mistake number 3. There have been several rounds of rejections and two appeals to the Board of Patent Appeals. He has just won a Pyrrhic victory in the Court of Appeals for the Federal Circuit (CAFC) wherein the Court vacated the PTO’s latest (2003) rejection, issued on January 31, 2003, in which “the examiner rejected the only independent as anticipated by his own, copyrighted manuscript. In the examiner’s view, the manuscript was sufficiently publicly accessible to be a printed publication because an interested researcher would have been able to find it by searching the Copyright Office’s catalog by title.” Since the CAFC ruled in his favor on very narrow grounds, Dr Lister will now probably continue his windmill-tilting pursuit of his patent.

The decision teaches us some important lessons about prior publication of our inventions and the use of the provisional application process to avoid the pitfall Dr. Lister has apparently just avoided. The key logic behind the “prior publication” bar to getting a patent is “… that once an invention is in the public domain, it is no longer patentable by anyone.”, even the inventor. However, in order to qualify as a printed publication a reference “must have been sufficiently accessible to the public interested in the art.” A reference is considered publicly accessible if it was “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.”

Since “sufficiently”, “reasonable” and “interested” are subjective terms, each case must be considered individually and in context. In this case, Dr Lister’s manuscript was available to read in Washington but the Copyright office’s catalog is only searchable by author and firstfirst word of the title, so the CAFC ruled that one could not find this method of playing golf by searching on “advanced”, the first word of the manuscript’s title.

So what are some other examples?

  • A thesis in a library, not yet cataloged or shelved is NOT accessible.
  • A thesis in a library cataloged by student’s name and shelved is NOT accessible in a meaningful way.
  • A document available at a single, perhaps distant location (viz., the copyright office)  IS accessible.
  • A document (e.g., in a collection) available for perusal but not copying is available if the subject is easily understood.
  • A document in a private, controlled collection is NOT accessible.
  • A poster presentation at a conference is a prior publication if the conference has “interested” persons attending and the content of the poster is easily understood and remembered by viewers.
  • A document is a prior publication even if it can be proven that no one actually looked at it.
  • A purely oral presentation is almost certainly NOT a prior publication.
  • Slides presented along with an oral presentation are a toss up (particularly with the ready availability of digital cameras).

The bottom line, of course, is that any material you are going to let out of your direct control may, as the Miranda warning goes, be used against you in a (patent) court. To avoid any question of prior publication, I advise people to file their documents or slides as a provisional application, understanding of course, that the ONLY “protection” this gives you is protection against a rejection based on prior public disclosure of whatever is in the document. Also, this meager protection is lost unless a regular application is filed within the year.

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