Inventors should Exercise Caution with Printed Publications about New Inventions
October 28, 2009
by Craig Lervick
When discussing "that new invention" with a patent attorney, questions about printed publications or papers invariably arise. Since the laws prohibit patents from issuing when the underlying invention has been described in printed publications either before creating the invention or more than one year prior to filing a patent application, early examination of this issue is important.
Certain documents are clearly publications: previous patents or patent applications published throughout the world; a paper published in a magazine; an article written for a trade publication; a paper posted on a publicly accessible website; or material in a textbook. Although the term "publication" is generally understood, circumstances do occasionally create questions that raise problems when trying to protect a new invention.
Generally, a qualifying "printed publication" is a written work that is sufficiently accessible to the public. "Public accessibility" is often the critical question. The Court of Appeals for the Federal Circuit (CAFC) has explained that a written work is considered "publicly accessible" if it was disseminated or otherwise made available that persons interested and ordinarily skilled in the subject matter can locate by exercising reasonable diligence.
For example, courts have found the following to not be printed publications: a thesis uncataloged and unshelved at a university library; and a thesis housed in a university's main library and chemistry department library referenced in index cards listing only the title and the author of each thesis, filed alphabetically by the author's last name. In both cases, the court held the thesis was not publicly accessible since it was not cataloged or indexed in a meaningful way to allow it to be discovered by means of customary search aids. On the other hand, another court found a dissertation to be a printed publication where it was shelved in the stacks and indexed in the catalog at a university library.
The CAFC recently examined another situation involving a written manuscript filed with the United States Copyright Office. Over two years after filing for a copyright on the manuscript, the inventor filed a patent application with the United States Patent and Trademark Office. Both the patent application and the manuscript covered the same invention. The CAFC held that the manuscript qualified as a printed publication because it could be discovered via keyword searching of the title or inventor’s name through common usual search methods for copyrighted works. The full text of the manuscript was not searchable in any manner. Nonetheless, because the manuscript could be located, the court determined it to be sufficiently publicly accessible.
To avoid issues at a later date, any published or distributed document describing or explaining an invention should be carefully analyzed and examined with the assistance of counsel early in the patent process.
Craig Lervick is a member of the Larkin Hoffman Daly & Lindgren Ltd. Intellectual Property, Technology, and Internet Practice.