Intellectual Property Law

Manuscript filed with copyright office not necessarily publicly available as of filing date

By McKee, Voorhees & Sease, P.L.C.

In a decision Tuesday, the Federal Circuit held the USPTO had not provided sufficient evidence that an inventor's manuscript was publicly accessible, and therefore available as prior art under § 102(b), before the critical date of the application.  As a result, the court reversed the Board of Patent Appeals and Interferences.

At issue was the inventor's own manuscript.  It was undisputed that the manuscript disclosed the invention and was filed with the U.S. Copyright Office more than a year before the filing date of the application.  The Board held this, combined with the ability to search the Copyright Office records by title, provided sufficient evidence of public accessibility to qualify the manuscript as prior art under § 102(b). 

The Federal Circuit reversed.  After surveying the applicable case law, the court held the copyright office automated catalog was insufficient to render the manuscript publicly accessible because it only permitted searching by the author's last name or the first word of the title of the work.  Further, while the copyright office records were spearately indexed by two commercial search providers that permitted keyword searching, there was no evidence in the record of when these commercial search providers would have included the relevant records.  As a result, the court vacated the Board's decision and remanded, noting that the rejection may be reinstated if there was sufficient proof of when the commercial databases indexed the manuscript.

More detail of In re Lister after the jump.

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Full post as published by FileWrapper on September 25, 2009 (boomark / email).