Under current U.S. patent law, certain activities by an inventor or others can negatively impact the inventor’s ability to obtain patent protection on their discovery. Such activities are articulated in 35 U.S.C. § 102 and include the on sale bar, the public use bar, and whether the invention was described in a “printed publication.”
In this series, we will examine what constitutes a “printed publication” and will provide a summary of cases related to certain categories of printed publications including:
• Patents and Patent Applications – Part 2
• Theses, Dissertations, and Other References in a Library – Part 3
• Presentations at Scientific Conferences – Part 4
• Technical Reports, Government Reports, and Related Documents – Part 5
• Sales Catalogs and Technical Brochures – Part 6
• Grant Proposals and Submissions to Regulatory Agencies – Part 7
• Publications on the Internet and Internet Archives – Part 8
• Summary and Practice Tips – Part 9
Note that the courts do not necessarily categorize printed publications along these lines, but we grouped the cases in this way for the purposes of this series of posts.
Statutory Basis for “Printed Publication”
Under 35 U.S.C. § 102 (pre-AIA), a person shall be entitled to a patent unless:
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication 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.
Section 102 was revised by the America Invents Act (AIA) of 2013 to include the phrase “or otherwise available to the public.” 35 U.S.C. § 102 (AIA) provides that “[a] person shall be entitled to a patent unless: (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or….”
The Manual of Patent Examining Procedure (MPEP) § 2152.02(e) explains that: This “catch-all” provision permits decision makers to focus on whether the disclosure was “available to the public,” rather than on the means by which the claimed invention became available to the public or whether a disclosure constitutes a “printed publication” or falls within another category of prior art as defined in AIA 35 U.S.C. § 102(a)(1).
MPEP § 2152.02(e) further goes on to explain that the availability of the subject matter to the public may arise in situations including, a student thesis in a university library; a poster display or other information disseminated at a scientific meeting; subject matter in a laid-open patent application or patent; or a document electronically posted on the Internet, among others. MPEP § 2152.02(e) (citations omitted).
Finally, MPEP § 2152.02(e) states that “[e]ven if a document or other disclosure is not a printed publication, …, either may be prior art under the “otherwise available to the public” provision of AIA 35 U.S.C. § 102(a)(1), provided that the claimed invention is made sufficiently available to the public.” Thus, going forward under 35 U.S.C. § 102 (AIA), whether the document is “sufficiently available to the public” will be a key factor in determining if the document constitutes a “printed publication” or not.
To our knowledge, whether the addition of the phrase “or otherwise available to the public” to § 102 altered the meaning of “printed publication” has not been addressed by the PTAB or any court. A similar issue related to the “on sale” bar of AIA § 102 was addressed in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc., et al., 139 S. Ct. 628 (2019). The U.S. Supreme Court found that the addition of the catchall phrase “or otherwise available to the public” was not enough of a change for the Court to conclude that Congress intended to alter the meaning of “on sale” in § 102. Until this issue is addressed by the courts, we suggest following the guidance of MPEP § 2152.02(e), which essentially recites many of the categories of printed publications that will be addressed in this series of posts.
In the university technology transfer setting, activities that fall under the printed publication category typically involve what often is referred to as a “public disclosure.” Common public disclosures include, but are not limited to, publications in a journal, presentations at scientific meetings, and the like. Note, however, that the term “disclosure” is neither used nor defined in 35 U.S.C. § 102. See MPEP § 2152.04.
As a result, the U.S. Patent and Trademark Office (USPTO) treats the term “disclosure” as a generic expression intended to encompass the activities articulated in 35 U.S.C. 102(a) (AIA). Id. (noting that the term “disclosure” is treated as being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application). Thus, rather than investigate whether a certain activity is a “public disclosure,” the inquiry is whether the activity constitutes a “printed publication.”
Generally, to constitute a “printed publication,” as that term is used in 35 U.S.C. § 102, a reference must be both “printed” and “published.” In re Bayer, 568 F.2d 1357, 1359 (CCPA 1978); In re Tenney, 254 F.2d 619, 622 (CCPA 1958). When presented with a particular set of facts in real life, however, that definition is not particularly helpful. Courts go further to state that the status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citing In re Lister, 538 F.3d 1307, 1311 (Fed. Cir. 2009). Accordingly, the determination of whether a document constitutes a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
Thus, because whether an activity constitutes a printed publication is so fact specific, we will provide an in-depth summary of case law involving several categories of printed publications. Our next post in this series is related to whether patents and published patent applications constitute printed publications: What Constitutes a Printed Publication – Patents and Published Patent Applications – Part 2.