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Manuscript filed with copyright office not necessarily publicly available as of filing date
September 25, 2009

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.

Richard Lister. frustrated with what he perceived as the slow pace of golf, developed a new type of golf game where players were permitted to re-tee the golf ball on every shot, so long as the player was not on the green or in a hazard. He described his new game in a manuscript, and applied for copyright protection on the manuscript on July 4, 1994. Lister received a registration certificate on July 18, 1994.

Some time later, Lister learned he needed a patent to protect his invention, and that his copyright would not be sufficient. As a result, he filed a patent application on August 5, 1996. After many years of prosecution and two appeals to the Board, Lister's claims were finally rejected in 2003 based on his manuscript. The Board affirmed this rejection in 2008, holding the manuscript was "publicly available" more than a year before his priority date because members of the public could locate the manuscript by searching the Copyright Office records for "golf" and "handicap" and locate the manuscript. Lister appealed.

The Federal Circuit vacated and remanded. The court reviewed some of its relevant cases on the subject of public availability of prior art references, specifically Hall, Cronyn, and Klopfenstein. As described in those cases, the key issue is whether the reference is "sufficiently accessible to the public interested in the art."

While the court agreed one in the art would be able to find the manuscript using the keywords "golf" and "handicap," such a search was not available at the Copyright Office at the relevant time. The only search of Copyright Office records that was possible is a search by author or by the first word of the title of the work. However, two commercial providers, Westlaw and Dialog, indexed the catalog data and included it in their respective databases. These commercial databases enabled keyword searching of the titles of the works, but not the full text. The court held this was sufficient to meet the public accessibilty requirement, as one in the art would have used the keywords "golf" and "handicap," as Lister himself did (of course, this seems somewhat circular).

This fact notwithstanding, the court vacated the rejection, because there was insufficient evidence in the record as to when Westlaw and Dialog indexed the contents of the Copyright Office records. While it is possible it was done shortly after their entry at the Copyright Office, it was also possible it was done years later. Therefore, the court remanded the matter back to the USPTO, expressly noting that if the USPTO could provide evidence that such indexing was completed before the critical date, that the rejections may be reinstated.

To read the full decision in In re Lister, click here.

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