Alex Gloor is a JD Candidate at Osgoode Hall Law School.

A search for prior art is performed before any patent application is filed. This purpose of this search is to try and ensure that the invention in question satisfies the novelty and non-obviousness requirements. However, the scenario may arise where documents containing relevant prior art exist but are not publicly accessible. The question of public accessibility was recently considered by the United States Court of Appeals for the Federal Circuit in In Re Richard S. Lister.

In 1994, Dr. Richard Lister had a certificate of registration issued by the United States Copyright Office for his manuscript entitled "Advanced Handicap Alternatives for Golf". Lister later realized that he needed a patent to properly protect his invention. He filed a patent application in 1996. This application was rejected under 35 U.S.C. § 102(b) on the grounds that his 1994 manuscript must have been publicly accessible.

The CAFC first turned its attention to the boundaries for what qualifies as a "printed publication". They acknowledge that while inventions in the public domain are not patentable, there is an accessibility requirement before something is considered public information. Generally, the "publicly accessible" requirement is met if someone "interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it". While it is a factual determination and thus must be evaluated on a case-by-case basis, specific guidance is provided for documents stored in libraries. This is done by distinguishing two cases: In Re Hall and In Re Bayer. In Hall, a dissertation that was shelved, indexed and searchable by ordinary library search methods was held to be publicly accessible. In Bayer, the library document was found to be inaccessible to the public because it was uncatalogued, unshelved and could not be found by ordinary search methods.

Applying this distinction to the facts at hand, the US CAFC found that the Lister Manuscript was publicly accessible. Three databases can be used to search for the manuscript: the Copyright Office, Westlaw and Dialog.  Using the Office's database you can search by the first word in the title of the work or by the author's last name. The only difference with the commercial databases was that you could search the entire title. The court found that a researcher  "reasonably skilled in the art using reasonable diligence" would perform a search with both "golf" and "handicap" in the query and thus that the manuscript was accessible.

The court considered another factor regarding accessibility. This related to an argument put forth by Dr. Lister that the manuscript was not accessible because of the burden of having to travel to the Copyright Office and the further inconvenience of not being able to produce copies of the manuscript. This argument was dismissed. Hall confirms that having to travel is not a bar to accessibility. Also, the court ruled that an "interested researcher would gain and retain an understanding" of the invention without acquiring a copy.

Despite finding the document accessible, the court remanded the case because there was insufficient evidence that the manuscript was publicly available for more than the requisite one year period before the filing of the patent application.  The Board of Patent Appeals and Interferences tried to argue that a prima facie assumption that the manuscript is posted in the relevant databases exists upon issuance of the certificate of registration by the Copyright Office. This argument was rejected as no evidence was put forth showing the common practice with respect to the posting of these manuscripts.

The future of the case under § 102(b) is uncertain, with the decision seemingly hinging on proof of the date that the manuscript was posted on either Westlaw or Dialog. Also, although current technology would probably prevent a similar situation with respect to the uncertain posting date from occurring, serious questions are still raised by this judgment. First of all, the conclusion that keyword searches by title are sufficient to make a document publicly accessible may be unfair in some situations. One can easily envision a situation where the title of the document does not aptly describe the method that the searcher is seeking. Because of the global nature of prior art searches, another potential problem would arise when people in remote locations do not have access to Westlaw or Dialog. Without access, the only remaining method of searching available would have been to search the Copyright Database, which only allows searching of the first word of the title. In this case that word would have been "Advanced"; something that could not be reasonably expected from even the worker most "reasonably skilled" in the art!

Finally, from the point of view of a casual observer, the length of time that Dr. Lister has been fighting for protection for his absurd "invention" detracts from the credibility of the entire US patent office and system. This sentiment has been echoed repeatedly in the comments section of the Patently-O post on the same subject.  Considering that Dr. Lister's "unique" method of playing golf is in actual fact something that thousands of casual or beginner golfers routinely do without ever hearing of this ridiculous claim should be grounds alone to dismiss the case under either § 101 or § 103.