Patent Law

In re Lister (Fed. Cir. 2009)

Lister is attempting to patent his method of playing golf that allows a player to tee-up each shot (except for hazards and greens). He filed his patent application in 1996. Two years prior, however, Lister had registered a copyright on his manuscript describing the game (acting pro se).

Based on the copyright submission, the examiner rejected the application as anticipated under Section 102(a) and barred under Section 102(b). The Board, however, eliminated the Section 102(a) rejection because "[Dr.] Lister could not have disclosed his own invention before he invented it." However, the board did agree that manuscript's availability at the copyright office did constitute prior publication under the statutory bar of Section 102(b). The touchstone for publication under Section 102(b) is public accessibility.

[The Board] concluded that an interested researcher would have been able to find the manuscript by searching the Copyright Office's catalog by title for the word "golf" in combination with the word "handicap." Additionally, the Board found that an individual seeking to view the manuscript would have been able to do so by visiting the Copyright Office. Finally, the Board rejected Dr. Lister's arguments that the inconvenience of visiting the Copyright Office and the Copyright Office's rules prohibiting individuals from making copies of the manuscript precluded a finding of public accessibility. With respect to the unavailability of copies, the Board found that the inventive concept was straightforward enough that it could be understood and retained by a person of ordinary skill in the art upon reading the manuscript without any need to obtain a copy.

Although there was no evidence that anyone actually looked at the manuscript, the Board held that public accessibility does not require that the document have been actually accessed.

On appeal, the Federal Circuit reversed ? finding that (1) the availability of a manuscript in the copyright office does not necessarily meet the accessibility requirement of Section 102(b); and (2) in this case, the PTO did not prove that the document was publicly accessible.

This case is akin to other "library" cases where prior art is found covered in dust in a secluded section of a library. In those cases, the material is considered public if "it could be located by persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence."

Here, the court found that the Library of Congress records did not create accessibility because those records were (at that time) not searchable by subject or keyword. Rather the LOC records could on be searched by title (beginning with the first word of the title of the article) or author last name.

The automated catalog was not sorted by subject matter and could only be searched by either the author's last name or the first word of the title of the work.

On the other hand, LOC records (although not the full manuscript text) are also available through Westlaw and Dialog. In its decision, the appellate panel indicated that the search features available through those paid services were sufficient to make the records "publicly accessible." However, the record did not indicate when Lister's records became available through Westlaw or Dialog and thus those sources cannot be relied on as prior art.

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) or (b). Quoting M.P.E.P. § 2128.

. . . .

Essentially, the evidence shows that at some point in time Westlaw and Dialog incorporated the Copyright Office's automated catalog information about the Lister manuscript into their own databases. There is no indication as to when that occurred or whether it was prior to the critical date. We see little difference between the evidence in this case and a situation in which an examiner comes across an undated reference that discloses an invention for which an applicant is seeking the patent. We surely would not view the mere existence of the reference in the latter scenario as prima facie evidence that it was available prior to the applicant's critical date.

. . . absent any evidence pertaining to the general practices of the Copyright Office, Westlaw, and Dialog, or the typical time that elapses between copyright registration, inclusion in the Copyright Office's automated catalog, and subsequent incorporation into one of the commercial databases, any presumption along those lines would be pure speculation.

On remand, the PTO can legitimately reject the application again if it can prove that the LOC records were available through Westlaw or Dialog more than one year prior to the 1996 patent application date.