![Board of Patent Appeals & Interferences Explains Accessibility ConsiderationsIn the electronic age, thousands of documents can be uncovered with a handful of keystrokes and a Google search. Many such documents find their way to the USPTO as references in a request for patent reexamination. Often times, the publication date/status of such documents, at least from a patent law perspective, is less than straightforward.In assessing the applicability of a publication as prior art against a given patent, it is important to realize that document accessibility was not so prevalent in years past. Public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication for prior art purposes. The various considerations at play in determining the public accessibility of a printed publication were outlined yesterday by the BPAI in Ex parte Ricoh Company, Ltd. In reversing the examiner, the Board explained thatthe relevant time period for ascertaining accessibility was the time of the patent filing, not the time of the patent reexamination.The Examiner also finds that any difficulty Appellant and others had in obtaining a copy of Dirkes Report did not rise above a level of reasonable diligence and does not demonstrate inaccessibility (Ans. 49-50). We find, however, the difficulties encountered in 2008 to obtain the copy to be immaterial since the relevant time period would be at or before the filing date of the '432 Patent.. . . .[T]he U.S. Patent and Trademark Office and the Patent Owner, were able to obtain copies of Dirkes Report (Ans. 54). However, as discussed supra, dissemination of an article twenty years after the filing date of the '432 Patent tells us little of the likelihood of accessibility of that article in the timeframe of that filing date.As this decision makes clear, the accessibility and dissemination of academic papers in particular is not a straight forward analysis. A similar dispute has been raging in the NTP reexaminations for years. As explained elsewhere in the decision, dissemination among parties obligated to confidentiality also impacts the accessibility analysis.For older, more obscure printed publications, third party requesters should consider providing declaration evidence to support publication dates, accessibility and public distribution at the time of the inventi](https://www.openlegalblogarchive.org/wp-content/uploads/2011/03/images_Open_to_the_public-1.jpg)
Board of Patent Appeals & Interferences Explains Accessibility ConsiderationsIn the electronic age, thousands of documents can be uncovered with a handful of keystrokes and a Google search. Many such documents find their way to the USPTO as references in a request for patent reexamination. Often times, the publication date/status of such documents, at least from a patent law perspective, is less than straightforward.In assessing the applicability of a publication as prior art against a given patent, it is important to realize that document accessibility was not so prevalent in years past. Public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication for prior art purposes. The various considerations at play in determining the public accessibility of a printed publication were outlined yesterday by the BPAI in Ex parte Ricoh Company, Ltd. In reversing the examiner, the Board explained thatthe relevant time period for ascertaining accessibility was the time of the patent filing, not the time of the patent reexamination.The Examiner also finds that any difficulty Appellant and others had in obtaining a copy of Dirkes Report did not rise above a level of reasonable diligence and does not demonstrate inaccessibility (Ans. 49-50). We find, however, the difficulties encountered in 2008 to obtain the copy to be immaterial since the relevant time period would be at or before the filing date of the ‘432 Patent.. . . .[T]he U.S. Patent and Trademark Office and the Patent Owner, were able to obtain copies of Dirkes Report (Ans. 54). However, as discussed supra, dissemination of an article twenty years after the filing date of the ‘432 Patent tells us little of the likelihood of accessibility of that article in the timeframe of that filing date.As this decision makes clear, the accessibility and dissemination of academic papers in particular is not a straight forward analysis. A similar dispute has been raging in the NTP reexaminations for years. As explained elsewhere in the decision, dissemination among parties obligated to confidentiality also impacts the accessibility analysis.For older, more obscure printed publications, third party requesters should consider providing declaration evidence to support publication dates, accessibility and public distribution at the time of the inventi
In the electronic age, thousands of documents can be uncovered with a handful of keystrokes and a Google search. Many such documents find their way to the USPTO as references in a request for patent reexamination. Often times, the publication date/status of such documents, at least from a patent law perspective, is less than straightforward.
In assessing the applicability of a publication as prior art against a given patent, it is important to realize that document accessibility was not so prevalent in years past. Public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication for prior art purposes. The various considerations at play in determining the public accessibility of a printed publication were outlined yesterday by the BPAI in Ex parte Ricoh Company, Ltd. In reversing the examiner, the Board explained that
the relevant time period for ascertaining accessibility was the time of the patent filing, not the time of the patent reexamination.
The Examiner also finds that any difficulty Appellant and others had in obtaining a copy of Dirkes Report did not rise above a level of reasonable diligence and does not demonstrate inaccessibility (Ans. 49-50). We find, however, the difficulties encountered in 2008 to obtain the copy to be immaterial since the relevant time period would be at or before the filing date of the ‘432 Patent.. . . .[T]he U.S. Patent and Trademark Office and the Patent Owner, were able to obtain copies of Dirkes Report (Ans. 54). However, as discussed supra, dissemination of an article twenty years after the filing date of the ‘432 Patent tells us little of the likelihood of accessibility of that article in the timeframe of that filing date.
As this decision makes clear, the accessibility and dissemination of academic papers in particular is not a straight forward analysis. A similar dispute has been raging in the NTP reexaminations for years. As explained elsewhere in the decision, dissemination among parties obligated to confidentiality also impacts the accessibility analysis.
For older, more obscure printed publications, third party requesters should consider providing declaration evidence to support publication dates, accessibility and public distribution at the time of the invention.