Public Accessibility of Prior Art: PTO Must Provide Evidence of Indexing Date

In re Lister (Fed. Cir. 2009)

Lister is attempting to patent his method of playing golf that allows a player to tee-up each shot (except for hazards and greens). He filed his patent application in 1996. Two years prior, however, Lister had registered a copyright on his manuscript describing the game (acting pro se).

Based on the copyright submission, the examiner rejected the application as anticipated under Section 102(a) and barred under Section 102(b). The Board, however, eliminated the Section 102(a) rejection because “[Dr.] Lister could not have disclosed his own invention before he invented it.” However, the board did agree that manuscript’s availability at the copyright office did constitute prior publication under the statutory bar of Section 102(b). The touchstone for publication under Section 102(b) is public accessibility.

[The Board] concluded that an interested researcher would have been able to find the manuscript by searching the Copyright Office’s catalog by title for the word “golf” in combination with the word “handicap.” Additionally, the Board found that an individual seeking to view the manuscript would have been able to do so by visiting the Copyright Office. Finally, the Board rejected Dr. Lister’s arguments that the inconvenience of visiting the Copyright Office and the Copyright Office’s rules prohibiting individuals from making copies of the manuscript precluded a finding of public accessibility. With respect to the unavailability of copies, the Board found that the inventive concept was straightforward enough that it could be understood and retained by a person of ordinary skill in the art upon reading the manuscript without any need to obtain a copy.

Although there was no evidence that anyone actually looked at the manuscript, the Board held that public accessibility does not require that the document have been actually accessed.

On appeal, the Federal Circuit reversed – finding that (1) the availability of a manuscript in the copyright office does not necessarily meet the accessibility requirement of Section 102(b); and (2) in this case, the PTO did not prove that the document was publicly accessible.

This case is akin to other “library” cases where prior art is found covered in dust in a secluded section of a library. In those cases, the material is considered public if “it could be located by persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence.”

Here, the court found that the Library of Congress records did not create accessibility because those records were (at that time) not searchable by subject or keyword. Rather the LOC records could on be searched by title (beginning with the first word of the title of the article) or author last name.

The automated catalog was not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work.

On the other hand, LOC records (although not the full manuscript text) are also available through Westlaw and Dialog. In its decision, the appellate panel indicated that the search features available through those paid services were sufficient to make the records “publicly accessible.” However, the record did not indicate when Lister’s records became available through Westlaw or Dialog and thus those sources cannot be relied on as prior art.

Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a) or (b). Quoting M.P.E.P. § 2128.

. . . .

Essentially, the evidence shows that at some point in time Westlaw and Dialog incorporated the Copyright Office’s automated catalog information about the Lister manuscript into their own databases. There is no indication as to when that occurred or whether it was prior to the critical date. We see little difference between the evidence in this case and a situation in which an examiner comes across an undated reference that discloses an invention for which an applicant is seeking the patent. We surely would not view the mere existence of the reference in the latter scenario as prima facie evidence that it was available prior to the applicant’s critical date.

. . . absent any evidence pertaining to the general practices of the Copyright Office, Westlaw, and Dialog, or the typical time that elapses between copyright registration, inclusion in the Copyright Office’s automated catalog, and subsequent incorporation into one of the commercial databases, any presumption along those lines would be pure speculation.

On remand, the PTO can legitimately reject the application again if it can prove that the LOC records were available through Westlaw or Dialog more than one year prior to the 1996 patent application date.

57 thoughts on “Public Accessibility of Prior Art: PTO Must Provide Evidence of Indexing Date

  1. Hello UK praction person. We are always told that EPO-PSA is flawed because it is “artificial”. But, if anything is “artificial” it is the premise that the PHOSITA knows every single document that has ever been “made available”. So, I can see some reason for the US position, that the PHOSITA doen’t know about everything.

    Are you still just as bemused?

  2. As a UK practioner I look on in bemusement. It seems to me that there is no inherent secrecy in the US Copyright Office, so the document could have been found, and would therefore be considered publicly available (from my UK perspective anyway).

  3. “evidence of that absence of backlog could have been adduced by the PTO, to win the case.”

    Not so fast…

    The evidence presented was that the Copyright Office index was inadequate in 1994-96 because it only allowed searching by author and first word of the title.

    Eliminating the Copyright Office backlog still leaves the question of when indexing by commercial services would have picked up the old registrations.

  4. Another great case for testing the foundations of patent law in Europe, where Art 52(1)(c) forbids patenting rules for games but where, apart from that, the issue would be whether the “publication” had rendered the Lister document “available” anywhere in the world to at least one member of “the public”.

    Was the Lister copyright work indexed within 2 years of arrival at the Copyright Office? The CAFC says it had been provided with “no substantial evidence” of that. As to the burden of proof, mainland Europe would focus on the “balance of probability” of indexing in less than 26 months of “pendency”. And I suppose the answer to the question whether there was an indexing lag would vary with the “backlog” at the Copyright Office in 1994-6.

    Presumably it wasn’t anywhere near as long as the backlog this year at the PTO, and evidence of that absence of backlog could have been adduced by the PTO, to win the case.

    Current pressure of work (!!!) it was, I suppose, that prevented the PTO from preparing the evidence needed to win this case.

  5. I feel the need to assail 6 for his conspicuous absence from this thread line (he must be busy with his work on diagramming the paragraphs of section 112, or understanding the mandates of Law as they apply to what he has been charged to examine). Beautiful skirt today 6, btw.

    Join me in celebrating my reaching 100% comments with assailing (according to the math of certain examiners).

    Now back to the train wreck.

  6. In the published apps on the USPTO an applicant that appears to be Dr. Lister has two, now abandoned, tries at changing the rules of baseball. Both had 101 rejections. The older of the two included 102 and 103 and maybe 112 rejections, I don’t recall.

    As we don’t have the file history, no telling what sort of rejections were made and apparently overcome to get here.

    Not legal advice, MHO, YMMV, etc.

  7. I’ve seen this kind of situation happen with IEEE journals before. The date of publication is fairly clear, usually. But sometimes the publication contains a date of submission/receipt. After some research, I discovered that sometimes the articles are accessible online before they are available in print. My research could not go any further at the time. Nonetheless, I believe there should be evidence by the PTO that the document was public before the date of print, and not just a bald assertion.

  8. “The Federal Circuit opinion appears to be silent on what might be a controlling fact”

    There is no requirement that a work be published before it is registered.

    Given that inane attempt by the PTO’s lawyer to read the IDS description as coming “directly” from the Copyright Office to mean something temporally immediate, it seems unlikely that the registration contained an actual admission of publication. It appears that the inventor used the copyright office to date stamp his documentation.

  9. Just a couple of random thoughts:

    Leaving aside for the moment the purpose of the USGA and the Royal & Ancient in promulgating a rule against improving one’s lie — after all, such improvement must have been publicly perfomed multiple times prior to the rule’s adoption, or why would such a rule be needed? — Lister’s invention might most generously be viewed as a method of play incorporating a handicap system not previously disclosed by another. I don’t see much problem with 101 given the current state of the law. As for 103, “you pays yer money and you takes yer chances.”

    With regards to 102, however, does anyone know whether Lister’s original application for copyright registration included a publication date? The Federal Circuit opinion appears to be silent on what might be a controlling fact.

    Given that the application was signed under penalty of 17 USC 506(e), an affirmative statement in it that the work had been published would IMHO seem to be not merely a statement against interest (both economic and penal interests), but overwhelming and compelling proof that the work had been published, and therefore a publication under Title 35.

    While Lampi Corp. may not estop a party from contradicting a statement of publication, it should be recalled that the district court in Lampi accepted the testimony of the trademark affiant that the phrase “first use in commerce” was misunderstood.

  10. Following on SteveW’s comment, just remember that “copyright” is not a verb – it’s a right, namely the exclusive right to copy, not a process of protecting that right.

    If you remember this, then you’ll be less likely to confuse the copyright and the registration of the copyright.

  11. For parsing this copyright stuff so thinly, you guys are using words very loosely. Everything in fixed form is copyrighted, and some of those things are also registered. You can protect yourself from harm by not violating copyrights. You are only exposed to statutory damages when you have already acted badly (i.e. violated a copyright that may or may not be registered), so why should the system reach out to protect you from extra damages?

  12. “I have to tell you also that this is a tried and true method. It works. 100% of the time. Every time.”

    60% of the time, it works every time.

  13. On the Copyright topic — “You can’t violate a copyright if you don’t see it,… so it’s moot”

    Practically, it’s not moot in my view because of the distinction between things that are truly expressive (therefore copyrightable) and things that are pure information and therefore copiable because of the non-existence or slimness of any “expression.” I agree whole-heartedly with smashmouth — it is absurd that we have a system where I can be subject to statutory damages for non-profit-yet-commercial copying of what looks like public domain non-expressive information, only to find out with a lawsuit that somebody had a registration for the work. How was I supposed to know it was copyrighted ?? It’s just a list of information without any claim of copyright anywhere on it, and it’s anyone’s guess what title it might be registered under at the copyright office, and then to say that my searcher can’t make a copy of what she sees if I send someone to D.C. to do a search for me. Is there any realistic way for me to know whether someone has registered a copyright claim on it? WHERE IS THE DUE PROCESS ??!!

  14. Claim 21 is a hoot. Was there a 112 rejection anywhere in the mix…under the claim, a player could elect to just tee the ball up on the tee and not during play for the rest of the hole….oh wait that is called real golf. Maybe throw a 103 and a 102 novelty rejection in there as well for fun. Is this even patentable subject matter?

    Why is this application still breathing after all this time? My dad saometime played golf this way in decades past when his game fell into disrepair. I guess is should tell him that his golf game is prior art.

  15. “Is there a difference between the “published or described” features of 102(a) and 102(b)?”

    Yes. 102(a) requires publication by another prior to the invention date. The fiction of calling the filing date the invention date does not work when the description of the invention is made by the inventor.

  16. “The Board, however, eliminated the Section 102(a) rejection because “[Dr.] Lister could not have disclosed his own invention before he invented it.” However, the board did agree that manuscript’s availability at the copyright office did constitute prior publication under the statutory bar of Section 102(b).”

    I do not understand this. Is there a difference between the “published or described” features of 102(a) and 102(b)? It seems this should have fell under both

  17. Oh, and to please the peanut gallery, let me add:

    I Assail thee. (I think I’m up to 99%)

    BWAAAHAAAAAAHAAAAAAAAAAAAAAAAAAAAAAAAAAAAHAAHAA

  18. C’mon 6, like that is your stand? Really?

    After I gave you so many items to choose from in my statements, you are going to rest your hat on that?

    BWAAAHAAAAAAHAAAAAAAAAAAAAAAAAAAAAAAAAAAAHAAHAA

  19. “The better, fairer way is for applicants to present claims which appear, upon examination, to be entitled to a patent.

    I have to tell you also that this is a tried and true method. It works. 100% of the time. Every time.”

    BWAAAHAAAAAAHAAAAAAAAAAAAAAAAAAAAAAAAAAAAHAAHAA

  20. You can’t violate a copyright if you don’t see it, it’s just an identical original creation. So that whole line of argument is moot.

  21. Anyone remember the (erroneous) CAFC decision a few years ago when an unpublished, unindexed application sitting the Canadian patent office was considered to be published prior art?

  22. In light of 6′s parody, (which I think is funny), I should qualify my previous statement and just say that the public should have reasonable access and the ability to make a (cheap) copy. To me it’s not that you have a right to have someone else pay for your copy, rather, it’s your right to notice.

  23. “everyone [should] get[] a free copy of all copyright material so we know what it is we are not suppose to copy”

    I agree, and it should be on golden paper or a golden cd and sent to my home address.

    I wonder if the gov could send me all of last winter’s blockbuster releases first?

  24. Ken Brooks said:
    “There is an analogous issue with RIAA lawsuits. If one has to pay for access to registered copyrights, then that violates the due process clause, becuase one cannot be held to law that one must pay to obtain notice of. That is a basic rule of due process. . . . everyone [should] get[] a free copy of all copyright material so we know what it is we are not suppose to copy.”

    I agree. That’s why it was a mistake to do away with the former requirement that a publication must be accompanied with a copyright notice, otherwise your work was public domain. Another example of the bad effects of “harmonization.” Apparently, “harmonization” means to change U.S. law to conform with foreign law, but only when to do so screws the public.

  25. “but there must be a better, fairer way than forcing an applicant to litigate for a decade and then start over.”

    I’m glad you brought up this subject! I’m happy to announce that there does happen to be a better, fairer way than forcing an application to litigate for a decade and then start over!

    Guess what it is?

    Take one guess.

    Ok, you were wrong.

    The better, fairer way is for applicants to present claims which appear, upon examination, to be entitled to a patent.

    I have to tell you also that this is a tried and true method. It works. 100% of the time. Every time.

  26. This seems a rather fact intensive investigation. I’m surprised the office would go out of it’s way to find out about all these different ways of accessing the article.

    “The answer may be that the sports and games art units of the PTO are staffed with some of the laziest Examiners in the entire system. Probably 80% of issued patents relating to golf equipment and methods are invalid. Pay your money, get your patent, hang it on your wall, impress your duffer buddies.”

    I’m pretty sure that we can live with this particular type of invalid patent. There are bigger fish to fry.

    ” Those who are “being ridiculous” would receive a “glove slap to the face.” ”

    Why can lawmakers not be as reasonable as this man is being with his proposal?

  27. “The Court’s holding adds another arrow to the applicant’s quiver.”

    Indeed it does, noiseabove.

    An arrow destined to be shot often in the months and years to come … for the benefit of many thousands of deserving inventors.

    And that’s what really matters here.

  28. During the first and only time I’ve ever played a round of golf (I think maybe around 4th grade which would mean 1992) I played golf the exact same way Lister “discloses”

  29. Always a good idea to manage all the IP on an idea in a coordinated manner. Also maybe check out: Lampi Corp. v. American Power Prods., Inc., 228 F.3d 1365, 56 USPQ2d 1445 (Fed. Cir. 2000)(declarations during trademark prosecution regarding a first sale date did not create judicial estoppel on the on-sale bar issue on the patent). Would be interesting to see how a set of facts, such as faced in Lampi, would play out today at the FedCir.

  30. Palmhair: “Would a declaration from Westlaw or Dialog suffice?”

    Does anyone think that Westlaw or Dialog does not have information about when the material was available on their database? Has anyone tried to get such information from these databases?

    I’m sure the issue comes up in litigation with some regularity.

  31. There is an analogous issue with RIAA lawsuits. If one has to pay for access to registered copyrights, then that violates the due process clause, becuase one cannot be held to law that one must pay to obtain notice of. That is a basic rule of due process. The laws must be published for all to view. To that end, all copyright material must be made readily available to the public for free so that we know what we are not suppose to copy, i.e., everyone gets a free copy of all copyright material so we know what it is we are not suppose to copy. If not, the notice requirement of the due process clause is not satisfied Q.E.D.

  32. Has anyone considered adding a criminal provision in any of the pending patent amendment acts aimed at applicants and patent agents/attorneys? Those who are “being ridiculous” would receive a “glove slap to the face.” This could also apply to examiners who cannot write a sentence in the English language.

  33. “What a colossal waste of attorney time and court resources – did no one tell Dr. Lister that this thing is dead under 101 anyways!?!?”

    I don’t think this is invalid under 101. It is tied to an apparatus (the golf club, golf ball). However, it is invalid under 103 or probably 102. Hasn’t anyone teed up on the fairway before? I mistakenly have numerous times (but, post 1996).

    So yes, this is a waste of time, but nevertheless it is a good case which summarizes the current state of public disclosure.

  34. “What we have is the Office trying to get around its own guidance (MPEP 2128) and being smacked down, not once but twice — when it lamely tried to assert that its failed first argument at least established a prima facia case.”

    Noise above law,

    Couldn’t agree with you more. That this application may go down on some other basis is not the point. What this panel of the Federal Circuit should be commended for is not simply accepting the PTO’s truly “lame” argument (or excuse) of a prima facie case to “shift the burden” to the applicant or to create a “presumption of a fact” when the PTO failed to supply real “evidence” to support its position. This case, as well as the Lucent Technologies case on the jury damage award calculation, is refreshing in that the Federal Circuit is scrutinizing the evidence being offered to make sure it’s sufficient to support the holding/ruling below.

  35. “I wonder how this might affect NTP’s appeal of the rejection under reexam of their ‘BlackBerry’ patents.”

    Maybe Examiner Mooney can provide some insightful and detailed analysis on that question.

  36. I wonder how this might affect NTP’s appeal of the rejection under reexam of their “BlackBerry” patents. A critical issue is where or not a Norwegian reference was “publicly available”.

  37. Malcolm said:
    “[I]t must be remembered that nobody is ‘forcing’ anyone to litigate anything.”

    You’re definitely correct as far as that goes, but I still disagree with your view that the applicant’s counsel should be able to avoid the problem. Not every application is as frivolous as this one. What about the close cases? It would be less unfair to enforce waiver aginst the PTO for all grounds of unpatentability not raised prior to the RCE or appeal to BPAI stage, in return for relaxing or even stripping the presumption of validity.

  38. Noise–
    I certainly agree to the extent the PTO ought to be bound by the MPEP. (Does anybody disagree with that? I hope not.) I guess the counter to that is in case the MPEP itself is couched in advisory language. It still seems that an applicant may reasonably rely on the MPEP. Just what you may rely on, however, is (presumably) up to the courts’ interpretation.

  39. Smashmouth,

    There are many grains of sand that one can trip over. The Pearl that I point out is that maybe, just maybe, the Office, being the administrative body that it is, can actually be held by a court of Law to follow its own administrative guidance (here MPEP 2128).

    Refreshing after the usual Office doublespeak, for example in the recent 101 guidance in which the Office proffered to help with the inconsistent application of Bilski by the examining corp(se) and the BPAI, yet whispered in its slippery voice that it was mere guidance and that no one actually had to follow it (or at least would not be held to follow it).

    I do not say this to minimize your (valid) concerns, but rather, since the case in hand has not been fully examined, what CAN be taken from the decision of the court – the pearl, as opposed to a mere piece of sand, is another decision holding the Office’s cold dead feet to the fire.

    The Court’s holding adds another arrow to the applicant’s quiver.

  40. “Does Dr. Lister have an attorney with knowledge of patent law?”

    Does the PTO?

    Apparently not.

    Not even you, Examiner Mooney. :-(

  41. Just a warning to fellow examiners that this is an old case that was never published, so any verbatim quotes of claims should come only from published sources, such as the CAFC ruling, which only published claim 21:

    21. A method for playing a game of organized golf wherein the improvement is that each participating player or group of players is permitted under the official or sanctioned rules of said game for normal play to raise or tee the ball up above turf level at any time during play, except for designated hazard areas and greens, and further comprising the step of recording the number of strokes taken by each participating player of [sic] group of players throughout said game for the purpose of comparing said number of strokes with the number of strokes of each other participating player or group of players or to an average or expected number of strokes for golf play in accordance with said game.

    Seems to me that the whole tee thing isn’t even a method step, and the only substantive limitation in the entire claim is “recording the number of strokes taken by each participating player of [sic] group of players throughout said game”.

  42. smashmouth: “there must be a better, fairer way than forcing an applicant to litigate for a decade and then start over”

    I understand where you’re coming from but in this case and probably most cases it must be remembered that nobody is “forcing” anyone to litigate anything. Does Dr. Lister have an attorney with knowledge of patent law? If so, then we can assume that this patent attorney has evaluated the merits of Dr. Lister’s claims and decided that the claims are valid and worth pursuing. Of course, prior to engaging in a lengthy lawsuit, some might attempt to get a second opinion.

    Others might not.

  43. Noise above Law said:
    “Rather than merely focusing on this particular application, whose merits have not been established in any final way, perhaps a different view is in order: [proceeding to address the 102(b) issue and the asserted failure of the PTO to follow the MPEP.]”

    My problem with this is simple, and the Fed. Cir. alluded to it in FN4: “Citing the thirteen-year pendency of his application, Dr. Lister also asks us to issue an order requiring the USPTO to conclude prosecution and issue a notice of allowance. Dr. Lister did not argue to the Board that the allegedly excessive delays during prosecution entitle him to the issuance of a patent. Accordingly, that issue is not properly before us. See In re Watts, 354 F.3d 1362, 1367-68 (Fed. Cir. 2004). Additionally, we note that our decision is limited to the question of whether the Board properly affirmed the examiner’s § 102(b) rejection. Other bars to patentability are not before us and may be raised during the proceedings on remand.”

    You can bet on remand this application will be rejected on other grounds. So why waste 13 years plus a few more? And in the alternative, if this were a patent-worthy application, the delay would be even more inexcusable. It reminds me of the outrage of In re Comiskey, where the Fed. Cir. sua sponte raised a 101 issue that had never been raised below, many years after prosecution had begun.

    I think raising all grounds of rejection at the outset, and certainly by the time an applicant appeals to the BPAI, subject to waiver for failure of the examiner to do so, is a lot more consistent with due process. Because of the bad effect on third parties (i.e., the general public), I understand it’s problematic to enforce waiver against the PTO in this manner, but there must be a better, fairer way than forcing an applicant to litigate for a decade and then start over.

  44. “Ask Kappos about it.”

    Why don’t you, Examiner Mooney? You’re over there at the PTO.

    Let us know what he says.

  45. “What’s next, a patent on the loser of each hole having to chug a beer?”

    No, a patent on the loser of each hole having to perform an act selected at random by a POWERFUL COMPUTER BRAIN!

    Ask Kappos about it.

  46. I infringed this patent repeatedly between 1990 and 1995. (Playing every shot with a tee is one way to bring a really high handicapper down into the reasonable range in not so serious golf.)

    What’s next, a patent on the loser of each hole having to chug a beer?

  47. UpNorth, smashmouth, and others,

    Rather than merely focusing on this particular application, whose merits have not been established in any final way, perhaps a different view is in order:

    What we have is the Office trying to get around its own guidance (MPEP 2128) and being smacked down, not once but twice — when it lamely tried to assert that its failed first argument at least established a prima facia case. (see Pages 15 and 16 of In re Lister).

    It appears that handwaving crap like “it’s gotta be…” that flies at the BPAI won’t fly at the CAFC.

  48. “On remand, the PTO can legitimately reject the application again if it can prove that the LOC records were available through Westlaw or Dialog more than one year prior to the 1996 patent application date.”

    Would a declaration from Westlaw or Dialog suffice?

    “Why wasn’t this application rejected under section 103?? It seems the only novelty is the desire to change the rules of golf to permit what otherwise is cheating.”

    The answer may be that the sports and games art units of the PTO are staffed with some of the laziest Examiners in the entire system. Probably 80% of issued patents relating to golf equipment and methods are invalid. Pay your money, get your patent, hang it on your wall, impress your duffer buddies.

  49. seems like a lot of $ spent for an application that is not likely to earn any revenues (“Hey Joe, wanna play a round using those new-fangled rules?”).

  50. What a colossal waste of attorney time and court resources – did no one tell Dr. Lister that this thing is dead under 101 anyways!?!?

  51. Why wasn’t this application rejected under section 103?? It seems the only novelty is the desire to change the rules of golf to permit what otherwise is cheating. Seems pretty obvious to me. If this gets issued, cheating duffers everywhere beware–you’ll be infringers!

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