Archive | Juni 2014

What is public or a publication?

The recent Suffolk Tech v. AOL and Google decision of the CAFC in USA has a lot of interesting comments on what is accessible to the public and what is a publication (http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1392.Opinion.5-22-2014.1.PDF).

The words of the statute ( 35 U.S.C. 102(a) (pre-AIA) ) are:

……. described in a printed publication…..

Since the 1952 date when this came into force all sorts of different ways have appeared to make information available to the public such as poster sessions, emails, websites, databases  etc. Do all of these meet the requirement of being a „printed publication“?

In the case in point the invention was described in a 1995 UseNet newsgroup post posted by a college student. One reason why the case is interesting is to compare it with the EPO’s approach to internet publications.

In its decision affirming the publication  the CAFC relied upon :

  • Case law had not placed much importance in the word „printed“. Various references were cited such as “Because there
    are many ways in which a reference may be disseminated  to the interested public, „public accessibility“ has been
    called the touchstone in determining whether a reference  constitutes a „printed publication“ bar under 35 U.S.C.  § 102(b).” SRI Int’l, Inc., 511 F.3d at 1194 (quoting In re  Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “
  • The record indicated that at the time, only  people with access to a university or corporate computer  could use newsgroups. BUT this subset of people would be more likely to be  skilled in the art.
  • There was no difficulty in finding the post because although not fully indexed, the UseNet group was structured in a hierarchical manner that would have allowed someone interested in the topic to identify the particular group and read the posts.
  • The information had been sufficiently disseminated as the post in question resulted in at least six responses in the week following the publication.

This level of detail is usually not required for a disclosure at the EPO. The EPO tends more to decide whether a document was available to the public – actual access by the public not being required.