Nurturing Inventions, Printed Publications & Patentability
One reoccurring theme at the Federal Circuit this year has been the patentability requirement that an invention not be disclosed in a printed publication more than a year prior to filing for domestic patent protection. 35 USC §102(a)(1) & (b)(1), pre-AIA §102(b). In the US, there is essentially a one-year grace period to file for patent protection from public disclosure of an invention. This grace period does not typically apply to foreign filings, however. Recent changes to the US Code, require that publication be sourced in the inventor that is seeking to take advantage of the grace period.
What typically occurs is that research-and-development scientists are a part of a community of artisans that often discuss their developments in the art. This takes the form of, for example, slideshow presentations at industry conferences and tradeshows or technical papers like articles and dissertations. Many companies find participation in these collaborative events beneficial to the growth of their own staff and the propulsion of development in their respective industries. What companies do not find beneficial is the way that their scientists seem to never realize the negative impact their public disclosures might have on its intellectual property rights.
Whether or not a printed document qualifies as a “printed publication” under §102 is a fact-driven question of law. GoPro v. Contour IP Holdings, Case Nos: 2017-1894 & -1936 (modified Nov. 1, 2018). Section 102’s printed-publication rule is based on the principle that if an invention is in the public domain before filing, it can no longer be patented by anyone. “[A] reference will be 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.’” Public accessibility is a question of fact. If accessibility is proven, actual receipt need not be demonstrated.
In 2018, IP stakeholders learned lessons of how “public accessibility” is assessed under a totality-of-the-circumstances analysis and can be influenced by modern technology.
For example, in June of 2018, the Court of Appeals rendered a decision in Medtronic v. Barry, Case Nos: 2017-1169 & -1170, reversing in part the §103 non-obviousness findings of the Patent Trial and Appeal Board (or PTAB) in an inter partes review (or IPR) by finding that videos and slides given out on CDs at a series of conferences might have qualified as “printed publications” under pre-AIA §102(b). Medtronic teaches that all the relevant factors must be considered in determining whether a document is a printed publication. The PTAB erred in finding that the materials were not publicly accessible without fully considering factors like, e.g.,
"1) 'the length of time the display was exhibit,' (2) 'the expertise of the target audience' (to determine how easily those who viewed the material could retain the information), (3) 'the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied,' and (4) 'the simplicity or ease with which the material displayed could have been copied.'"
quoting In re Klopfenstein. The panel went on to add that in this instance other relevant factors included the size and nature of the meetings and whether they were open to the public as well as the expectation of confidentiality with dissemination. The case was remanded back to the PTAB to consider all the relevant factors.
Another case highlighting that all relevant circumstances must be considered is GoPro v. Contour IP Holdings, Case Nos: 2017-1894 & -1936 (Fed. Cir. Nov. 1, 2018 *modified). In GoPro, the Court of Appeals taught that the target audience for dissemination is relevant to “public accessibility” though not dispositive. The panel reversed the non-obviousness findings of the PTAB in an IPR based upon finding certain catalogs to be prior art printed publications under §102. The industry tradeshow at which the catalog was offered was directed to purchasers (not manufactures). “[O]ur case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.” The audience composition was not dispositive as to public accessibility and because the tradeshow was still directed towards “persons interested” this circumstance did not disfavor public accessibility.
On a different note, other cases illustrate how modern technology can influence public accessibility. In July of 2018, the Court of Appeals decided Jazz Pharm. v. Amneal Pharm., Case Nos: 2017-1671, -1673, -1674, -1675, -1676, -1677 & -2075 affirming the §103 obviousness findings of the PTAB in an IPR. Jazz Pharm teaches that relatively obscure documents may qualify as prior art so long as the relevant public has a means of accessing them. In Jazz Pharm, an oral paper with written copies provided to seven others, without restriction and available online by request for a substantial time was determined to be “publicly accessible.” The meeting was open to the public and how to access meeting materials was published by the FDA in the Federal Register via hyperlink. Moreover, no confidentiality was required from recipients. Due to the wide dissemination, a substantial exposure time and no reasonable expectation of confidentiality, the paper was held to be prior art as the posting occurred two months before the 1-year critical date. Neither indexing or searchability is necessary to establish accessibility even though the Federal Register is so indexed.
Contrarily, the Court of Appeals decided that technical accessibility, i.e., through a website, is not necessarily tantamount to public accessibility. Acceleration Bay v. Activision Blizzard et al., Case Nos: 2017-2084, -2085, -2095, -2096, -2097, -2098, -2099, -2117 & -2118 (Fed. Cir. Nov. 6, 2018). In Acceleration Bay, the panel affirmed the PTAB’s finding that a technical report, accessible through a website, was not a printed publication. The website upon which the report was stored was only reliably searchable by author and year, it was not reliably searchable by keyword. Therefore, the site was not meaningfully indexed such that an “interested” artisan exercising reasonable diligence would have found it, so the document was not publicly accessible.
Best Practices
Considering recent lessons highlighted by this year’s CAFC docket on printed publications, several best practices are recommended.
For sharing information, company policy on protocol for public disclosures should be updated to inform technical personnel that even oral presentations to potential customers instead of competitors may toll the 1-year grace period. Something as minimal as storing the document on a website or making it available by request only could still render it “publicly accessible.” Company policy can include documenting any innovation or trial results through the company’s record-of-invention system before disclosure.
When audience for meetings and conferences, staff should be encouraged to maintain individual libraries of the more impressive materials they obtain. Information such as the date and location of the meeting as well as how the relevant public could locate the materials should accompany the record. J. Green et al., Best Practices for Proving a Document is a Printed Publication (USPTO Dec. 7, 2017), pp13-14, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/procedures/archived-list-previous-ptab. The library can be as informal a collection as chronologically sorted binders kept at one’s desk.
Knowing these updates is another sound way of nurturing your company’s inventions.
