Under U.S. patent laws, an application for patent must be filed within one year of the first public use, sale, offer for sale, or printed publication. Otherwise, those activities will be considered prior art against any later filed patent application. With the rise of communication over the Internet, these bars to patentability (i.e., public use, sale, offer for sale, or printed publication) are implicated in these new ways of communication. The following case illustrates how a newsgroup posting was considered prior art.
The internet has allowed people to communicate in different ways. People who previously would never have communicated or helped each other, not for want of desire to help, but because they would never have been introduced to each other, are now able to. For example, newsgroups are popular in connecting people to discuss topics of common interest. People can join a newsgroup or other online forums to ask questions and provide answers in a group discussion format. Now, crowdsourcing of requests for information and resources have recently become popular as well. These are all new forms of communication that could be considered a “printed publication” for prior art purposes to reject a patent application or invalidate a patent.
Suffolk Technologies LLC v. AOL, Inc. held that a newsgroup conversation of an inventor was considered a printed publication, and thus prior art against his own patent application. This case underscores the importance of cautioning inventors against any kind of discussion, publicizing or disclosure activity that can jeopardize rights to the invention, especially in these new forms of communication.
Printed publications typically include flyers, pamphlets, brochures that are distributed to the public. The Manual of Patent Examining Procedure Section 2128 provides an in-depth discussion as to when a particular document may be considered a printed publication for the purposes of qualifying the reference as prior art that can be cited to reject claims in a patent application. The primary considerations are the level or degree of public accessibility of the printed reference to the relevant public.
In Suffolk Technologies, the Federal Circuit held that a posting in a newsgroup is a printed publication for the purposes of prior art. In particular, the inventor had posted a question in a newsgroup for web development using common gateway interface (CGI) technologies. . The post and one of the answers to the post were being characterized as a printed publication, and thus prior art. The patent owner (Suffolk) argued that the newsgroup posting is not prior art because the post would be difficult to locate, and those in the newsgroup were not those of ordinary skill in the art. In other words, the patent owner was arguing that the post and answer was not publicly accessible, and even if it was, that the publication was not made to the relevant public.
The Federal Circuit rejected these arguments. Even though the newsgroup allowed beginners (i.e., users having less than ordinary skill) to join in on the discussion, this implied that there were more sophisticated users that would qualify as having at least ordinary skill. Accordingly, the Court found that the audience of the post was those of ordinary skill in the art or the relevant public.
Moreover, the newsgroup organized the posts in a hierarchical manner. In particular, the name of the newsgroup was comp.infosystems.www.authoring.cgi, which allowed someone interested in CGI to easily locate a list of posts in this newsgroup. Subject matter categorization is sufficient to make a posting and its conversation “publicly accessible” even if each category might have many postings, and one interested in locating the particular information would have to wade through numerous postings.
Although the case involves Usenet newsgroups that are not as popular now, the basis of the opinion could be applied to web-based forums where inventors engage in dialogue with other inventors, and may also allow inventors to ask questions hoping that a patent attorney might give them free advice. These types of postings may now be considered to be printed publications.
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