Among the types of prior art which may be considered by a patent examiner during examination of a patent application is “printed publications.” Fine, so what, exactly, is a “printed publication?”
In order to qualify as a printed publication, a reference “must have been sufficiently accessible to the public interested in the art.” It is “sufficiently accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”
Recently, all of this became painfully clear to a certain Dr. Lister. In Re Lister Dr. Lister was apparently an avid golfer. In 1994 he submitted, to the Copyright Office, a manuscript describing a supposedly new method of playing golf. Two years later he filed a patent application directed to this method.
The patent examiner rejected the patent claims as being anticipated by the above-mentioned manuscript. On appeal, Lister – who must have been a truly avid golfer – argued that the manuscript was not a printed publication because it was not listed in any catalog or index that would have enabled an interested searcher to discover it. The C.A.F.C. noted that the title of the manuscript included relevant terms enabling a researcher exercising reasonable diligence to discover the manuscript through a title search of the Westlaw and Dialog databases. Thus, the manuscript was a “printed publication.”
THE LESSON TO BE LEARNED: If you copyrighted your manuscript, you might as well forget about patenting the method and just join the other doctors on the golf course.