2128.01 Level of Public Accessibility Required [R-07.2022]
The statutory phrase “printed publication” has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was “published.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568, 7 U.S.P.Q.2d 1057, 1062 (Fed. Cir. 1988).
I. A THESIS PLACED IN A UNIVERSITY LIBRARY OR A DOCUMENT PLACED IN AN ONLINE DATABASE MAY BE PRIOR ART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC
A doctoral thesis indexed and shelved in a library is sufficiently accessible to the public to constitute prior art as a “printed publication.” In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even if access to the library is restricted, a reference will constitute a “printed publication” as long as a presumption is raised that the portion of the public concerned with the art would know of the invention. In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).
In In re Hall, general library cataloging and shelving practices showed that a doctoral thesis deposited in university library would have been indexed, cataloged and shelved and thus available to the public before the critical date. Compare In re Cronyn, 890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir. 1989) wherein doctoral theses were shelved and indexed by index cards filed alphabetically by student name and kept in a shoe box in the chemistry library. The index cards only listed the student name and title of the thesis. In Cronyn, the court held that the students’ theses were not accessible to the public because they had not been either cataloged or indexed in a meaningful way, e.g., by title or in some other way that bears a relationship to the subject of the thesis, but instead were cataloged by the researcher’s name. Compare In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) (A reference will constitute a “printed publication” as long as a presumption is raised that the portion of the public concerned with the art would know of the invention even if accessibility is restricted to only this part of the public. But accessibility to applicant’s thesis was restricted to only three members of a graduate committee. There can be no presumption that those concerned with the art would have known of the invention in this case.).
In determining whether a document in an online database is a printed publication, public accessibility is key. See MPEP § 2128, subsection I. In Voter Verified, Inc. v. Premier Election Sols., Inc. the court found that “(i)ndexing is not ‘a necessary condition for a reference to be publicly accessible’; it is but one among many factors that may bear on public accessibility.” Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1381, 104 USPQ2d 1553, 1557 (Fed. Cir. 2012) (quoting In re Lister, 583 F.3d 1307, 1312, 92 USPQ2d 1225, 1228 (Fed. Cir. 2009)). The court further stated that “indexing is no more or less important in evaluating the public accessibility of online references than for those fixed in more traditional, tangible media”. Id. See also Telefonaktiebolaget LM Ericsson v. TCL Corp., 941 F.3d 1341, 1346-47, 2019 USPQ2d 428076 (Fed. Cir. 2019) (The court found the Jentschel reference was available to the public based on a declaration and evidence that the reference was received and shelved in a German library. Ericsson argued that public accessibility required something more than simply shelving of the reference in a library. The court found Ericsson’s argument unpersuasive because it was undisputed that the library was accessible to the public and that the reference was published as a journal for at least 30 years. The court pointed out that Ericsson produced no evidence to counter the public accessibility evidence of record.).
A document in an online database is not always deemed a printed publication. In Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed. Cir. 2018), the court agreed with the Board that an electronic technical report did not constitute a “printed publication” within the meaning of (pre‑AIA) 35 U.S.C. 102(a). The court agreed with the Board that an interested skilled artisan, using reasonable diligence, would not have been able to find the technical report on the CSE Technical Reports Library website despite some indexing and search functionality on the website that permitted technical accessibility. Technical reports were listed only by author or year, and there was no evidence how many reports were in the Library’s database in 1999. It was determined that at best, an artisan might have located the cited technical report by skimming through potentially hundreds of titles in the same year, with most containing unrelated subject matter, or by viewing all titles in the database listed by author, when the authors were not particularly well known. Also, the website’s advanced search form was found to be deficient because the ability to search keywords for author, title, and abstract fields was not reliable.
II. ORALLY PRESENTED PAPER CAN CONSTITUTE A “PRINTED PUBLICATION” IF WRITTEN COPIES ARE AVAILABLE WITHOUT RESTRICTION
A paper which is orally presented in a forum open to all interested persons constitutes a “printed publication” if written copies are disseminated without restriction. Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985) (Paper orally presented to between 50 and 500 persons at a scientific meeting open to all persons interested in the subject matter, with written copies distributed without restriction to all who requested, is a printed publication. Six persons requested and obtained copies.); see also M & K Holdings, Inc. v. Samsung Elecs. Co., 985 F.3d 1376, 2021 USPQ2d 123 (Fed. Cir. 2021). An oral presentation at a scientific meeting or a demonstration at a trade show may be prior art under 35 U.S.C. 102(a)(1)’s provision: “otherwise available to the public.” See MPEP § 2152.02(e).
III. INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT “PRINTED PUBLICATIONS”
Documents and items only distributed internally within an organization which are intended to remain confidential are not “printed publications” no matter how many copies are distributed. There must be an existing policy of confidentiality or agreement to remain confidential within the organization. Mere intent to remain confidential is insufficient. In re George, 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports disseminated in-house to only those persons who understood the policy of confidentiality regarding such reports are not printed publications even though the policy was not specifically stated in writing.); Garret Corp. v. United States, 422 F.2d 874, 878, 164 USPQ 521, 524 (Ct. Cl.1970) (“While distribution to government agencies and personnel alone may not constitute publication … distribution to commercial companies without restriction on use clearly does.”); Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990) (Four reports on the AESOP-B military computer system which were not under security classification were distributed to about fifty organizations involved in the AESOP-B project. One document contained the legend “Reproduction or further dissemination is not authorized.” The other documents were of the class that would contain this legend. The documents were housed in Mitre Corporation’s library. Access to this library was restricted to those involved in the AESOP-B project. The court held that public access was insufficient to make the documents “printed publications.”).
IV. PUBLICLY DISPLAYED REFERENCES CAN CONSTITUTE A “PRINTED PUBLICATION” EVEN IF THE REFERENCES ARE NOT DISSEMINATED BY COPIES OR INDEXED IN A LIBRARY OR DATABASE
A publicly displayed document where persons of ordinary skill in the art could see it and are not precluded from copying it can constitute a “printed publication,” even if it is not disseminated by the distribution of reproductions or copies and/or indexed in a library or database.
As stated in In re Klopfenstein, 380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 (Fed. Cir. 2004), “the key inquiry is whether or not a reference has been made ‘publicly accessible.’” Prior to the critical date, a fourteen-slide presentation disclosing the invention was printed and pasted onto poster boards. The printed slide presentation was displayed with no confidentiality restrictions for approximately three cumulative days at two different industry events. Id. at 1347, 72 USPQ2d at 1118. The court noted that “an entirely oral presentation at a scientific conference that includes neither slides nor copies of the presentation is without question not a ‘printed publication’ for the purposes of [pre-AIA] 35 U.S.C. § 102(b). Furthermore, a presentation that includes a transient display of slides is likewise not necessarily a ‘printed publication.’” Id. at 1349 n.4, 72 USPQ2d at 1120 n.4. In resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a “printed publication” under pre-AIA 35 U.S.C. 102(b), the court considered the following factors: “the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.” Id. at 1350, 72 USPQ2d at 1120. Upon reviewing the above factors, the court concluded that the display “was sufficiently publicly accessible to count as a ‘printed publication.’” Id. at 1352, 72 USPQ2d at 1121.
Similarly, in Medtronic Inc., v. Barry (891 F.3d 1368, 127 USPQ 1208) (Fed. Cir. 2018) a video and slides presented at two conferences prior to the critical date were found to be publically accessible. When considering the factors set forth in In re Klopfenstein, the court stated “[i]t may be relevant to determine whether … members were expected to maintain the confidentiality of received materials or would be permitted to share or even publicize the insights gained and materials collected…”. Id at 127 USPQ2d at 1218. In addition, in GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 128 USPQ2d 1447 (Fed. Cir. 2018), the court stated that the expertise of the target audience is a factor in determining public accessibility but is not dispositive of the inquiry. “Rather, our 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.” Id. at 695, 128 USPQ2d at 1451.
See also Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 127 USPQ2d 1485 (Fed. Cir. 2018) (A notice in the Federal Register which included instructions on accessing reference materials was sufficient for the materials to be considered publicly accessible; the Board did not need to find that specific persons actually received or examined the materials).
“We have consistently held that indexing or searchability is unnecessary for a reference to be a printed publication.” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1359, 127 USPQ2d 1485,1493 (Fed. Cir. 2018). But see Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed. Cir. 2018)(an electronic technical report did not constitute a “printed publication” because the indexing or searchability was deficient, and an interested skilled artisan, using reasonable diligence, would have to skim through potentially hundreds of titles in the same year, with most containing unrelated subject matter).
Note that an oral presentation at a scientific meeting or a demonstration at a trade show may be prior art under 35 U.S.C. 102(a)(1)’s provision: “otherwise available to the public.” See MPEP § 2152.02(e). “Trade shows are not unlike conferences – a trade show is directed to individuals interested in the commercial and developmental aspects of products. If one desires to examine certain new products on the market, attending a trade show involving identical or similar products is a good option.” GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 694, 128 USPQ2d 1447, 1451 (Fed. Cir. 2018).