Welcome to the PATENT CASTLE

Dr. Lister, a Ph.D. clinical psychologist and avid sportsman discovered that casual golfers had difficulty with the ordinary requirement that, beginning on the second stroke on each hole, the ball must be hit lying directly on the ground. He wrote a manuscript that described a method of playing golf in which recreational golfers were permitted to tee up their balls on every shot except from hazard areas or on the green.

Without the aid of a lawyer, Dr. Lister then tried to obtain intellectual property protection for his method of playing golf. He registered his manuscript in the Copyright Office on July 4, 1994, and the Copyright Office issued a certificate of registration on July 18, 1994. It was only later that Dr. Lister discovered that he needed a patent rather than a copyright to protect his invention, son, on August 5, 1996, he filed patent application in the United States Patent and Trademark Office (USPTO). After some 13 years of prosecution of the patent application and a Board of Patent Appeals and Interferences (BPAI) decision upholding the examiner's rejection of the patent application, the case was appealed to the U.S. Court of Appeals for the Federal Circuit.

The Federal Circuit was left to determine the type and quality of evidence needed to prove whether the copyrighted manuscript was "publicly available" on or before the critical bar date, i.e., one year before the filing of the patent application.

Follow up:

An invention that was patented or described in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States cannot be patented. This bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. However, a "printed publication" under this rule must have been sufficiently accessible to the public interested in the art. Whether a patent is sufficiently accessible is determined by a case-by-case basis on the facts and circumstances surrounding the reference's disclosure to members of the public. Whether a reference was catalogued or indexed is helpful, but not conclusive, evidence that a reference is publicly accessible.

Dr. Lister's manuscript was copyrighted more than one year before the filing date of the patent application, and the Copyright Office kept a copy in Washington, D.C. that was available on request to be inspected by the public. The Copyright Office will not provide copies of the manuscript, nor will it allow individuals inspecting the manuscript to make copies themselves.

The fact that one must travel to Washington or hire a local individual to inspect Dr. Lister's manuscript is irrelevant to Dr. Lister's case, because the court had previously ruled in another case that a reference can be considered publicly accessible even if gaining access to it might require a significant amount of travel. It is also unnecessary for to show that anyone actually inspected the reference, as doing so is not a requirement for public accessibility. Also, an interested researcher would be able to gain and retain an understanding of the invention upon inspection of the manuscript without having obtained a copy of it.

To be considered publicly accessible, a person must be able to learn of its existence and potential relevance prior to the critical date. For a copyrighted reference that is not otherwise available, evidence of accessibility may include indexing by the Copyright Office's automated catalog and two commercial databases. The Copyright Office's database allowed searching only by the author's last name or the first word of the title of the work. The commercial databases allowed keyword searches of the title, but not the full texts, of the work. A reasonably diligent interested researcher would use the word "golf" in combination with "handicap" to search the commercial databases, and both words were in the title of the manuscript. Thus, the manuscript is publicly accessible as of the date it was included in either one of the commercial databases.

Dr. Lister's invention would thus be barred from patentability, except for the requirement that it be publicly accessible more than one year prior to the filing of his patent application. Dr. Lister's Information Disclosure Statement (IDS) is silent as to date on which his manuscript was indexed by the commercial databases, and the government provided no evidence regarding this date. Because of the lack of evidence, the government has not even established a prima facie case that warrants shifting the burden of proof to Dr. Lester. The Federal Circuit thus concluded that the BPAI erred in affirming the examiner's rejection, and remanded the case for further proceedings.

In re Lister Slip Op. 2009-1080, (Fed. Cir. 2009)