In In re Lister the Court of Appeals for the Federal Circuit (CAFC) ruled a patent application for a method of playing golf had not been anticipated under 35 U.S.C. § 102(b) by a manuscript the applicant had submitted to the United States Copyright Office which had described his invention.

The Examiner had rejected five remaining claims of the application as being anticipated under the statutory bar of 35 U.S.C. § 102(b). The Board of Patent Appeals and Interferences (BPAI) upheld the Examiner’s rejections under the statutory bar of § 102(b) after reversing the Examiner’s § 102(a) novelty rejection. The CAFC vacated the BPAI’s decision, and remanded the case for further proceedings.

Applicant Lister had submitted a manuscript describing his method of playing golf to the United States Copyright Office on July 4, 1994, in the mistaken belief that that would be the proper way to get intellectual property protection for his idea. He later realized his mistake and, on August 5, 1996, Lister filed an application with the United States Patent and Trademark Office. Since then, the application had been rejected, amended and appealed to the BPAI twice, with five claims remaining at issue.

The Examiner found the manuscript submitted to the Copyright Office was a printed publication under § 102(b) because a researcher could have found the manuscript by searching the Office’s catalog. During appeal the BPAI upheld the statutory bar rejection. Under In re Klopfenstein, a publication must be “publicly accessible” to qualify as a printed publication, and since the Copyright Office’s archives are open to the public are searchable by title and author name, the BPAI concluded that a researcher would have been able to find the manuscript. Lister appealed the BPAI’s decision.

Citing Kyocera Wireless Corp. v Int’l Trade Comm’n, the CAFC pointed out that whether a publication qualifies as publicly accessible depends on whether it was available and findable by people skilled in the art “exercising reasonable diligence.” Lister had two arguments as to why his deposit in the Copyright Office should not count as a prior publication: first, that it would be burdensome for a researcher to travel to Washington, D.C. to inspect the manuscript and, second, that there was no evidence regarding when the manuscript was included in the Copyright Office’s catalog or a corresponding commercial database, and without its inclusion in an index searchers would not be able to find the manuscript.

The CAFC stressed it does not matter whether anyone actually looks at the manuscript, but whether anyone could do so, and in this case, interested people could have done so. The Copyright Office catalog was only searchable by the last name of the author or by the first word of the title of the work which, in this case, was “Advanced.” The USPTO agreed that this alone would not have been sufficient for a searcher to find the document. Two commercial databases which also provide access to the Copyright Office catalog were capable of being searched by keywords in the titles, but the texts were not searchable. The CAFC stated that since the words “golf” and “handicap” both appeared in the title, and it would have been reasonable for a searcher interested in improving golf scores to use those terms when searching, it would have been possible for a searcher to find the manuscript via the commercial databases.

The CAFC then turned to when the manuscript was included in the commercial databases. The USPTO offered no evidence showing the manuscript had been included in either database prior to the filing date, nor did it offer any evidence to show what the usual process was for indexing Copyright Office deposits in the commercial databases. The USPTO said it had shown a prima facie case that the manuscript had been included in the commercial databases, so the burden should shift to the applicant to show that the manuscript had not been included more than one year prior to his filing date. The CAFC rejected this argument and noted the government had offered no evidence regarding when the manuscript was included in the commercial databases. The CAFC could not conclude that the manuscript had been indexed prior to the critical date of one year before the date of filing. The CAFC ruled that the BPAI had erred in affirming the Examiner’s 102(b) statutory barrejection and remanded the case.