When is an Electronic Document a Printed Publication for Prior Art Purposes?

ScreenShot001Wynn W. Coggins — the PTO’s Chief Examiner of eCommerce patent applications — recently published a useful article about how her art unit deals with electronic prior art. The following are some highlights.

Internal documents:

Internal documents intended to be confidential are not “printed publications” and are unavailable for use as prior art. This is regardless of how many copies are distributed. Additionally, note that “[w]hile distribution to government agencies and personnel alone may not constitute publication…distribution to commercial companies without restriction on use clearly does.” Garrett v. US., 422 F.2d 874 (Ct. Cl. 1970).

Electronic Publications:

An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. § 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. Thus, “whether information is printed, handwritten, or on microfilm or magnetic disk or tape, etc., the individual who wishes to characterize the information as a printed publication…should produce sufficient evidence of its dissemination or that it has been otherwise available and accessible to persons concerned with the art to which the document relates…” Wyer, 655 F.2d 227, Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228 (W.D. Wash. 1999).

Web Pages Must Be Static:

Prior art disclosures on the Internet or in an on-line database are considered to be publicly available as of the date the item was publicly posted. This is provided that the item is dated and not temporal, and can be indexed for subsequent retrieval. An example of a temporal item is a web broadcast that cannot be saved, retrieved or printed, e.g., a live simulcast feed that is not archived, and a “streaming” audio or video that “flashes” across the screen.

Read the Article. (Via Michael White)

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

30 thoughts on “When is an Electronic Document a Printed Publication for Prior Art Purposes?

  1. I came across this thread while looking for help to fight a USPTO rejection citing a Wayback Machine webpage as a prior art reference. In the final office action, the Examiner cited BPAI Appeal 2007-0987, which indicates support for the Wayback Machine as prior art:
    link to fr.com

    A recent CAFC case addressed the use of a document stored on an FTP server and found that the paper, “though on the FTP server, was not catalogued or indexed in a meaningful way and not intended for dissemination to the public.”
    SRI Int’l, Inc. v. Internet Security Systems, Inc. et al. (2007-1065)
    link to cafc.uscourts.gov

  2. Probably no one will be visiting this article again but came across a list of Federal cases and Courts who actually used Wikipedia before March 2007. After reading the article Courts may think twice before they use Wikipedia as anything other than ‘a passing reference’. Check out link below:

    link to lawprofessors.typepad.com

    An excerpt: “Credibility is important. Consider this excerpt from the case of Campbell ex rel. Campbell v. Secretary of Health and Human Services, 69 Fed.Cl. 775: …A review of the Wikipedia website reveals a pervasive and, for our purposes, disturbing series of disclaimers, among them, that: (i) any given Wikipedia article “may be, at any given moment, in a bad state: for example it could be in the middle of a large edit or it could have been recently vandalized;” (ii) Wikipedia articles are “also subject to remarkable oversights and omissions;” (iii) “Wikipedia articles (or series of related articles) are liable to be incomplete in ways that would be less usual in a more tightly controlled reference work;” (iv) “[a]nother problem with a lot of content on Wikipedia is that many contributors do not cite their sources, something that makes it hard for the reader to judge the credibility of what is written;” and (v) “many articles commence their lives as partisan drafts” and may be “caught up in a heavily unbalanced viewpoint.””

  3. Continuing my thought above, I would explain to the Examiner that a printout from The Wayback Machine is effective as prior art no earlier than the day that the Examiner himself downloaded it. Earlier than that, there’s no evidence that anything was published by anyone, ever.

  4. To those of you above who support use of The Wayback Machine or The Internet Archive, what is your basis for believing that the dates it gives are reliable and should be binding when cited by an Examiner?

    For a conventional publication, the printed publication date is considered reliable because, for example, it’s available from a thousand different sources and all of those copies will bear the same date. Counterfeiting or error would be detected readily. The plaintiff and defendant will independently obtain their own copies of the publication.

    But concerning The Wayback Machine, I personally know nothing about its reliability; how dates are applied to archived documents; whether the process is manual and/or subject to possible error; why the applied dates are secure from being changed; whether the downloaded file can be altered by the downloader, etc. And it’s only one source; there’s no way to check it. What is the justification for The Wayback Machine to be a certifier of prima facie reliable prior art?

  5. One more thing. Consider further that an “Internet disclosure” such as a web page could be put up on a website and therefore have ascribed to it a posting date, but not made live and therefore accessible for some time thereafter, maybe as long as six months to a year – having significant impact on its status as a publication until it is actually made live.

    But I’m just a simple cave man. We don’t have this problem with stone tablets…

  6. The other thing P.A., is that even if you can prove that a page looked a certain way on a certain date, there is no assurance that it looked that way every other day.

    In other words, can you call a transitory display of some material on a webpage a “publication.” If you can’t prove that the state of the content was fixed from the date of publication, as you can with a document, then I would argue that you can’t prove publication.

    By the way, don’t get me wrong, I love Wiki, but it is and will always be first and foremost an encyclopedia – a secondary and not a primary reference.

  7. P.A. I think I acknowledged that my comments were notwithstanding change history, however, as we consult “archives” to validate the veracity of the thing under scrutiny we brush up against the venerable principles of hearsay… established to address the very thing that we are talking about, the legal certifiability of Internet content.

  8. An interesting article title “Kicking Wiki Out Of The Patent Office” (see link to businessweek.com), quotes Patents Commissioner John Doll stating “[t]he problem with Wikipedia is that it’s constantly changing . . . ” The article further quotes a USPTO spokesperson, who state “We’ve taken Wikipedia off our list of accepted sources of information.”

    It is important to note that this article is over a year old.

    Ben at link to windycityip.com

  9. EG I will dodge your last question but re your first question: the doc/drawing was originally a pdf doc/drawing and as such if you right click on a pdf and then go to properties, left click on properties – you can then see the dates of alterations and access to the document from the beginning of the creation of the document. I’m not an expert but I have access to experts who can point you in the right direction if you have any more questions.

  10. Business Week (9/4/2006 Issue 3999, p12) reported that the United States Patent & Trademark Office will no longer accept Wikipedia entries as “accepted sources of information”

  11. I didn’t realize that examiners were banned from citing Wikipedia entries. I have seen an office action that did cite to Wikipedia, albeit on a topic that was an established mathematical principle. The examiner cited to the Wiki archive. I’d like to hear where this ban stems from – internal PTO policy for example? Is the ban published anywhere?

  12. Mooney

    you are still here with your useless comments…
    Don;t you get anythinbg better to do, fella , like play ball ?

    AS far as Wikipedia and other free-access-for-everybody online publications are concerned, I have stories to tell…
    no time to write it all here, I will tell it all to the judge and the jury at the patent trial…
    Let me just say that Wikipedia is one of the most biased and in many casess plainly falsified information sources whenever patents come up

    Sooooooo many little nice folks like you Mooney out there typing on little keyboards…

    You are sitting at the kiddies table tonight, Malcolm Mooney !!!

  13. Defenderoftruth-Your case story is very interesting. My question: how did the altered drawing be found as a fake. Where can I find more info about the case?

  14. Never realized that the “wayback machine” was something real. I always thought it was an “imaginary time machine” referred to on the Rocky and Bullwinkle show involving Mr. Peabody and Sherman. (I know, I’m dating myself.)

  15. What is interesting to me is that while examiners may be able to rely on anything that may prove anticipation or obviousness, e.g., a wayback machine entry dated before the critical date, the same evidence is – at this point – unlikely to be admissible in court due to hearsay issues.

    AFAIK, the wayback machine has overcome hearsay objections in only one case (Telewizja Polska United States v. Echostar Satellite Corp., 2004 U.S. Dist. LEXIS 17876 (N.D. Ill., 2004)). Granted, I last looked into this about two years ago, but at the time there were a number of cases vehemently deriding the Internet in general as being completely unreliable to prove something was published on a given date due to the potential for hacks, modifications, etc.

    The discrepancy between what an examiner can use to determine pre-grant patentability and what is admissible in court to invalidate an issued patent is what I find truly interesting. It makes a case for re-exam in attacking a patent’s validity.

    -Patrick

  16. Actually, TTAB is now accepting Wikipedia as evidence. Probably not long until the PTO allows the same.(In re IP Carrier Consulting Group, TTAB, Serial No. 78542726, 6/18/07).

  17. “citing Wikipedia in an Office action is forbidden due to unreliability”

    I must say that Wikipedia seems extremely reliable to me on most scientific issues, at least as reliable as other references that are allowed (offline and online encylopedias). If anything, the problem is that wiki is not detailed enough.

    I recently encountered a PTO patent disclosing a homeopathic administration that is vastly more unreliable than the wikipedia article re same.

    Bottom line: the ban on Wiki citations is bogus.

  18. “I know that the examiners are encouraged to use the Internet Wayback Machine to determine the date of an online reference, but citing Wikipedia in an Office action is forbidden due to unreliability. Has Wikipedia been cited in an appeal or in litigation?”

    While certainly not authoritative, a NYT article on this subject may be of general interest:

    link to nytimes.com

  19. I know that the examiners are encouraged to use the Internet Wayback Machine to determine the date of an online reference, but citing Wikipedia in an Office action is forbidden due to unreliability. Has Wikipedia been cited in an appeal or in litigation?

  20. I have not as yet found anything appearing on my screen from the internet that is truly “temporal”. Is there such a creature?

  21. The issue about when and whether electronic documents published on the Internet become “publications” under 35 USC 102(b) (and as of what date) is a fascinating (and troubling) one. The key Federal Circuit cases to consider are In re Klopfenstein, 72 U.S.P.Q.2d (BNA) 1117 (Fed. Cir. 2004)(clarified when a presentation at a scientific meeting can become a “publication”); In re Croyn, 890 F.2d 1158 (Fed Cir. 1989) (college student presentation of undergraduate thesis to defense committee of 4 faculty members not “publication”); In re Hall, 781 F.2d 897 (Fed Cir. 1986) (thesis filed and indexed in university library was “publication”); Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104 (Fed Cir. 1985) (paper delivered orally to First International Cell Culture Congress was “publication”); cf. In re Wyer, 655 F.3d 221 (CCPA 1981) (Australian patent application kept on microfilm at Australian Patent Office was “publication”). This subject could be a great paper or law review article (may be one exists already).

  22. Yep, archive.org or waybackmachine, if they have it, can prove an earlier captured version of the webpage you’re viewing existed at that earlier date (or conversely, that that content did not exist at that earlier date.)

  23. CaveMan is missing part of the puzzle, however. Wiki’s tend to keep track of changes, and archives the way a page looked at a particular point in time. At least wikipedia.org does this. So if you wanted to see what the Coca-Cola wiki page looked like on Feb 10 of this year, go to: link to en.wikipedia.org

  24. While not the perfect solution. The internet archive available at: http://www.archive.org can verify the content of ‘published’ material available via the internet during a particular time period. The archive doe not capture every change to the page, but displays a series of dates on which the page was archived. It is an invaluable tool for validity work.

  25. CaveMan is correct. Just recently this occurred with a case concerning date of engineering drawings. Infringer copied and altered drawings of a patented device it had infringed and then gave a time stamp of 2 years earlier to prove to the Court the device was ‘prior art’.

  26. “Prior art disclosures on the Internet or in an on-line database are considered to be publicly available as of the date the item was publicly posted.”

    These types of electronic documents have some significant problems.

    Maybe you can show that a page was created on a certain date, but it could have been modified yesterday. Thus, proof that a page was “published” on a certain day, is not proof that it was published in its anticipatory form on that day. It could have easily been modified into an anticipatory form. Wikipedia is an example of an evolving “publication.”

    I have successfully challenged the application of on line documents in rejections for that reason. Its different if a printed publication is made available on line, since the actual date of publication of the document can be independently verified, particularly with scientific journals and patent documents. However, the actual dates of “publication” of “prior art disclosures on the Internet” cannot easily be verified, since there is no real way for the public to determine whether the disclosures have been modified from their original form.

    This is a bigger problem than meets the eye. A potential infringer for example could have a wiki type page that, while “published” in 2002 is internally under constant modification. A convenient disclosure could appear that antedates a critical invention date of a competitor. Even if the disclosure is held out to be unmodified and ostensibly “stable” there is no real way to independently verify that it is without examining company IT records – unless the modification history is publicly available and not subject to modification itself.

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