data/2100/s2128.html.txt

[
# 2128 "Printed Publications" as Prior Art [R-10.2019]


[Editor Note: For applications subject to the first inventor to file (FITF)
 provisions of the AIA, see also **[MPEP §§ 2152.02(b)](s2152.html#ch2100_d20033_1da60_2e9)** and
 **[2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**]
 

**I.** **A REFERENCE IS A "PRINTED PUBLICATION" IF IT IS ACCESSIBLE TO THE PUBLIC**A reference is proven to be a "printed publication" "upon a
 satisfactory showing that such document has been 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." *In re
 Wyer,* 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (quoting *I.C.E. Corp.
 v. Armco Steel Corp.,* 250 F. Supp. 738, 743, 148 USPQ 537, 540 (SDNY 1966))
 ("We agree that ‘printed publication’ should be approached as a unitary concept. The
 traditional dichotomy between ‘printed’ and ‘publication’ is no longer valid. Given the
 state of technology in document duplication, data storage, and data retrieval systems,
 the ‘probability of dissemination’ of an item very often has little to do with whether
 or not it is ‘printed’ in the sense of that word when it was introduced into the patent
 statutes in 1836. In any event, interpretation of the words ‘printed’ and ‘publication’
 to mean ‘probability of dissemination’ and ‘public accessibility’ respectively, now
 seems to render their use in the phrase ‘printed publication’ somewhat redundant.")
 *In re Wyer,* 655 F.2d at 226, 210 USPQ at 794. See also
 *Voter Verified, Inc. v. Premier Election Solutions*, 698 F.3d 1374,
 1380, 104 USPQ2d 1553, 1556-57 (Fed. Cir. 2012) ("the ultimate question is whether the
 reference was ‘available to the extent that persons interested and ordinary skilled in
 the subject matter or art[,] exercising reasonable diligence, can locate it’" (citations
 omitted)). 
 


The Federal Circuit stated the following in
 *Medtronic, Inc. v. Barry*, 891 F.3d 1368, 1380, 127 USPQ2d 1208,
 1216-17 (Fed. Cir. 2018): 
 



> 
> Whether a reference qualifies as a "printed
>  publication" is a legal conclusion based on underlying factual determinations.
>  *Suffolk Techs., LLC v. AOL Inc.*, 752 F.3d 1358, 1364 (Fed. Cir.
>  2014) (citation omitted). "The ‘printed publication’ provision of **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)** ‘was
>  designed to prevent withdrawal by an inventor ... of that which was already in the
>  possession of the public.’ " *Bruckelmyer v. Ground Heaters, Inc.*,
>  445 F.3d 1374, 1378 (Fed. Cir. 2006) (alteration in original) (quoting *In re
>  Wyer*, 655 F.2d 221, 226 (C.C.P.A. 1981)); see *Blue Calypso, LLC
>  v. Groupon, Inc.*, 815 F.3d 1331, 1348 (Fed. Cir. 2016) ("This rule is
>  grounded on the principle that once an invention is in the public domain, it is no
>  longer patentable by anyone." (internal quotation marks and citations omitted) ).
>  Medtronic, as the patent challenger, bears the burden of establishing that a
>  particular document is a printed publication. See *Blue Calypso*,
>  815 F.3d at 1350–51 (holding that petitioner failed to carry its burden of proving
>  public accessibility of the allegedly invalidating reference).
>  
> 
> 
>  The determination of whether a document is a
>  "printed publication" under **[35 U.S.C. § 102(b)](mpep-9015-appx-l.html#d0e302395)** "involves a
>  case-by- case inquiry into the facts and circumstances surrounding the reference’s
>  disclosure to members of the public." *In re Klopfenstein*, 380 F.3d
>  1345, 1350 (Fed. Cir. 2004). "Because there are many ways in which a reference may be
>  disseminated to the interested public, ‘public accessibility’ has been called the
>  touchstone in determining whether a reference constitutes a ‘printed publication’ bar
>  under **[35 U.S.C. §
>  102(b)](mpep-9015-appx-l.html#d0e302395)**." Blue Calypso, 815 F.3d at 1348 (quoting *In re
>  Hall*, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). "A reference will be
>  considered publicly 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.’" Id. (quoting *Kyocera
>  Wireless Corp. v. Int’l Trade Comm’n*, 545 F.3d 1340, 1350 (Fed. Cir.
>  2008)). 
>  
> 
> 
> 


See also *Carella v. Starlight Archery,* 804 F.2d 135,
 231 USPQ 644 (Fed. Cir. 1986) (Starlight Archery argued that Carella’s patent claims to
 an archery sight were anticipated under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** by an
 advertisement in a Wisconsin Bow Hunter Association (WBHA) magazine and a WBHA mailer
 prepared prior to Carella’s filing date. However, there was no evidence as to when the
 mailer was received by any of the addressees. Plus, the magazine had not been mailed
 until 10 days after Carella’s filing date. The court held that since there was no proof
 that either the advertisement or mailer was accessible to any member of the public
 before the filing date there could be no rejection under **[pre-AIA 35 U.S.C.
 102(a)](mpep-9015-appx-l.html#d0e302383)**.). 
 


When a document is cited in a rejection of a claim in an
 examination of a patent application or during an reexamination proceeding, an applicant
 or patent owner may challenge its public availability and/or the date it became publicly
 accessible, even when the document itself contains a publication date, by filing a
 proper affidavit or declaration under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)** that includes facts and
 evidence to support the applicant or patent owner's position. See **[MPEP § 716](s716.html#d0e92085)***et seq.*

**II.** **ELECTRONIC PUBLICATIONS AS PRIOR ART*** 

***A.******Status as a 
 "Printed
 Publication"***  An electronic publication, including an online database or Internet
 publication (e.g., discussion group, forum, digital video, and social media post), is
 considered to be a "printed publication" within the meaning of **[35 U.S.C.
 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** and **[pre-AIA 35 U.S.C. 102(a) and (b)](mpep-9015-appx-l.html#d0e302383)**
 provided the publication was accessible to persons concerned with the art to which
 the document relates. See *In re Wyer,* 655 F.2d 221, 227, 210 USPQ
 790, 795 (CCPA 1981) ("Accordingly, whether information is printed, handwritten, or
 on microfilm or a magnetic disc or tape, etc., the one who wishes to characterize the
 information, in whatever form it may be, as a ‘printed publication’ ... should
 produce sufficient proof of its dissemination or that it has otherwise been available
 and accessible to persons concerned with the art to which the document relates and
 thus most likely to avail themselves of its contents.’" (citations omitted).). See
 also *Amazon.com v. Barnesandnoble.com,* 73 F. Supp. 2d 1228,
 53 USPQ2d 1115, 1119 (W.D. Wash. 1999) (Pages from a website were relied on by
 defendants as an anticipatory reference (to no avail), however status of the
 reference as prior art was not challenged.); *In re Epstein,* 32
 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Database printouts of abstracts which
 were not themselves prior art publications were properly relied as providing evidence
 that the software products referenced therein were "first installed" or "released"
 more than one year prior to applicant’s filing date.); *Suffolk Tech v. AOL
 and Google,* 752 F.3d 1358, 110 USPQ2d 2034 (Fed. Cir. 2014) (A newsgroup
 posting constituted prior art as it was directed to those having ordinary skill in
 the art and was publicly accessible because the post was sufficiently
 disseminated.)
 


The Office policy requiring recordation of the field of search and
 search results (see **[MPEP § 719.05](s719.html#d0e94319)**) weighs in favor of finding that Internet
 and online database references cited by the examiner are "accessible to persons
 concerned with the art to which the document relates and thus most likely to avail
 themselves of its contents." *Wyer,* 655 F.2d at 221, 210 USPQ at
 790. Office copies of an electronic document must be retained if the same document
 may not be available for retrieval in the future. This is especially important for
 sources obtained from the Internet and online databases.
 

***B.******Date of Availability***  Prior art disclosures on the Internet or on an online database are
 considered to be publicly available as of the date the item was publicly posted. See
 subsection I above. Absent evidence of the date that the disclosure was publicly
 posted, if the publication itself does not include a publication date (or retrieval
 date), it cannot be relied upon as prior art under **[35 U.S.C.
 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** and **[pre-AIA 35 U.S.C. 102(a) or (b)](mpep-9015-appx-l.html#d0e302383)**.
 However, it may be relied upon to provide evidence regarding the state of the art.
 Examiners may ask the Scientific and Technical Information Center to find the
 earliest date of publication or posting. See **[MPEP § 901.06(a)](s901.html#d0e113237)**, subsection IV.G.
 
 

***C.******Extent of Teachings Relied Upon*** An electronic publication, like any publication, may be relied upon
 for all that it would have reasonably suggested to one having ordinary skill in the
 art. See **[MPEP
 § 2121.01](s2121.html#d0e201800)** and **[§ 2123](s2123.html#d0e202024)**. Note, however, that if an
 electronic document which is the abstract of a patent or printed publication is
 relied upon in a rejection under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** or
 **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)**, only the text of the abstract (and not the underlying
 document) may be relied upon to support the rejection. In situations where the
 electronic version and the published paper version of the same or a corresponding
 patent or printed publication differ appreciably, each may need to be cited and
 relied upon as independent references based on what they disclose. 
 

***D.******Internet Usage Policy*** See **[MPEP § 904.02(c)](s904.html#d0e115698)** for the portions of the Internet Usage
 Policy pertaining to Internet searching and documenting search strategies. See
 **[MPEP §
 707.05(e)](s707.html#d0e73852)** for the proper citation of electronic documents.
 
 

***E.******Wayback Machine
 ®***The Wayback Machine® is a
 digital library maintained by the Internet Archive (a non-profit organization) for
 viewing information on archived digital Internet webpages. Simply, the Wayback
 Machine® uses software programs, known as crawlers, to
 surf the Internet and automatically store copies of Web objects (Web pages, images,
 videos, etc.), preserving these objects as they exist at the point and time of
 capture. These Web objects are stored as Web captures with the capture time/date in
 the form of a time stamp and the URL of the original website of capture. Accordingly,
 the Wayback Machine® provides the ability to view and
 browse Internet information that may no longer be available on the original website. 
 


Prior art obtained via the Wayback
 Machine® sets forth a *prima facie*
 case that the art was publicly accessible at the date and time provided in the time
 stamp. The burden then shifts to the applicant should they wish to challenge the
 authenticity, reliability or accessibility of such information.
 

***F.******Social
 Media***Social media websites on the Internet, such as
 YouTubeTM, TwitterTM,
 FacebookTM, and public forum posts, can be a source of
 prior art, provided the public accessibility requirements, as laid out in subsection
 I are met. Thus, all information on social media is not necessarily publically
 accessible. Public accessibility is determined on a case-by-case basis taking into
 consideration factors such as, where the information is posted, privacy restrictions
 placed on the posting, the length of time it was posted, and whether the information
 is indexed for searching. 
 


Some social media websites are not archived by the
 Wayback Machine®. Therefore, examiners may have to rely on
 the timestamps on the social media sites to establish the public accessibility date.
 However, the accuracy of timestamps on social media websites may need to be
 scrutinized with care, as the reliability of some websites do not approach those of
 other types of Internet publications, such as those providing peer-reviewed material.
 When a document is cited in a rejection of a claim, an applicant or patent owner may
 challenge its public availability and/or date that it became publicly available, even
 where the information self-contains a publication date, by filing a proper affidavit
 or declaration under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)**. See
 **[MPEP §
 716](s716.html#d0e92085)***et seq.*


For examples of social media website citation formats
 see **[MPEP §
 707.05(e)](s707.html#d0e73852)**. 
 

**III.** **EXAMINER NEED NOT PROVE ANYONE ACTUALLY LOOKED AT THE DOCUMENT**There is no need to prove that someone actually looked at a publication
 when that publication is accessible to the public through a library or patent office.
 See *In re Wyer,* 655 F.2d 221, 210 USPQ 790 (CCPA 1981); *In
 re Hall,* 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). "A reference is
 considered publicly accessible 'upon a satisfactory showing that such document has been
 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.' 'If accessibility is proved, there is no requirement to show that particular
 members of the public actually received the information.'" *Jazz Pharm., Inc. v.
 Amneal Pharm., LLC,* 895 F.3d 1347, 1355-1356 (Fed. Cir. 2018) (quoting
 *Wyer,* 655 F.2d at 226) and *Constant v. Advanced
 Micro-Devices, Inc.,* 848 F.2d 1560 , 1569 (Fed. Cir. 1988)). 
 



# 2128.01 Level of Public Accessibility Required [R-10.2019]


The statutory phrase "printed publication" has been
 interpreted to mean that before the critical date the reference must have been
 sufficiently accessible to the public interested in the art; dissemination and public
 accessibility are the keys to the legal determination whether a prior art reference was
 "published." *Constant v. Advanced Micro-Devices, Inc.,* 848 F.2d 1560,
 1568, 7 U.S.P.Q.2d 1057, 1062 (Fed. Cir. 1988)
 

**I.** **A THESIS PLACED IN A UNIVERSITY LIBRARY OR A DOCUMENT PLACED IN AN ONLINE
 DATABASE MAY BE PRIOR ART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC**A doctoral thesis indexed and shelved in a library is sufficiently
 accessible to the public to constitute prior art as a "printed publication."
 *In re Hall,* 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even
 if access to the library is restricted, a reference will constitute a "printed
 publication" as long as a presumption is raised that the portion of the public
 concerned with the art would know of the invention. *In re Bayer,*
 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).
 


In *In re Hall,* general library cataloging and
 shelving practices showed that a doctoral thesis deposited in university library
 would have been indexed, cataloged and shelved and thus available to the public
 before the critical date. Compare *In re Cronyn,* 890 F.2d 1158, 13
 USPQ2d 1070 (Fed. Cir. 1989) wherein doctoral theses were shelved and indexed by
 index cards filed alphabetically by student name and kept in a shoe box in the
 chemistry library. The index cards only listed the student name and title of the
 thesis. In *Cronyn,* the court held that the students’ theses were
 not accessible to the public because they had not been either cataloged or indexed in
 a meaningful way, e.g., by title or in some other way that bears a relationship to
 the subject of the thesis, but instead were cataloged by the researcher's name.
 Compare *In re Bayer,* 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) (A
 reference will constitute a "printed publication" as long as a presumption is raised
 that the portion of the public concerned with the art would know of the invention
 even if accessibility is restricted to only this part of the public. But
 accessibility to applicant’s thesis was restricted to only three members of a
 graduate committee. There can be no presumption that those concerned with the art
 would have known of the invention in this case.).
 


In determining whether a document in an online
 database is a printed publication, public accessibility is key. See
 **[MPEP §
 2128](s2128.html#d0e202564)**, subsection I. In *Voter Verified, Inc. v.
 Premier Election Sols., Inc.* the court found that "(i)ndexing is not ‘a
 necessary condition for a reference to be publicly accessible’; it is but one among
 many factors that may bear on public accessibility." *Voter Verified, Inc. v.
 Premier Election Sols., Inc.,* 698 F.3d 1374, 1381, 104 USPQ2d 1553, 1557
 (Fed. Cir. 2012) (quoting *In re Lister,* 583 F.3d 1307, 1312, 92
 USPQ2d 1225, 1228 (Fed. Cir. 2009)). The court further stated that "indexing is no
 more or less important in evaluating the public accessibility of online references
 than for those fixed in more traditional, tangible media". *Id.*


A document in an online database is not always deemed
 a printed publication. In *Acceleration Bay, LLC v. Activision Blizzard
 Inc.*, 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed. Cir. 2018), the court
 agreed with the Board that an electronic technical report did not constitute a
 "printed publication" within the meaning of **[(pre‑AIA) 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**. The
 court agreed with the Board that an interested skilled artisan, using reasonable
 diligence, would not have been able to find the technical report on the CSE Technical
 Reports Library website despite some indexing and search functionality on the website
 that permitted technical accessibility. Technical reports were listed only by author
 or year, and there was no evidence how many reports were in the Library’s database in
 1999. It was determined that at best, an artisan might have located the cited
 technical report by skimming through potentially hundreds of titles in the same year,
 with most containing unrelated subject matter, or by viewing all titles in the
 database listed by author, when the authors were not particularly well known. Also,
 the website’s advanced search form was found to be deficient because the ability to
 search keywords for author, title, and abstract fields was not reliable.
 

**II.** **ORALLY PRESENTED PAPER CAN CONSTITUTE A "PRINTED PUBLICATION" IF WRITTEN
 COPIES ARE AVAILABLE WITHOUT RESTRICTION**A paper which is orally presented in a forum open to all interested
 persons constitutes a "printed publication" if written copies are disseminated
 without restriction. *Massachusetts Institute of Technology v. AB Fortia,* 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985) (Paper orally
 presented to between 50 and 500 persons at a scientific meeting open to all persons
 interested in the subject matter, with written copies distributed without restriction
 to all who requested, is a printed publication. Six persons requested and obtained
 copies.). An oral presentation at a scientific meeting or a demonstration at a trade
 show may be prior art under **[35 U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**’s provision:
 "otherwise available to the public." See **[MPEP §
 2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**. 
 

**III.** **INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT "PRINTED
 PUBLICATIONS"**Documents and items only distributed internally within an
 organization which are intended to remain confidential are not "printed publications"
 no matter how many copies are distributed. There must be an existing policy of
 confidentiality or agreement to remain confidential within the organization. Mere
 intent to remain confidential is insufficient. *In re George,*
 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports disseminated
 in-house to only those persons who understood the policy of confidentiality regarding
 such reports are not printed publications even though the policy was not specifically
 stated in writing.); *Garret Corp. v. United States,* 422 F.2d 874,
 878, 164 USPQ 521, 524 (Ct. Cl.1970) ("While distribution to government agencies and
 personnel alone may not constitute publication ... distribution to commercial
 companies without restriction on use clearly does."); *Northern Telecom Inc.
 v. Datapoint Corp.,* 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990) (Four
 reports on the AESOP-B military computer system which were not under security
 classification were distributed to about fifty organizations involved in the AESOP-B
 project. One document contained the legend "Reproduction or further dissemination is
 not authorized." The other documents were of the class that would contain this
 legend. The documents were housed in Mitre Corporation’s library. Access to this
 library was restricted to those involved in the AESOP-B project. The court held that
 public access was insufficient to make the documents "printed publications.").
 

**IV.** **PUBLICLY DISPLAYED REFERENCES CAN CONSTITUTE A "PRINTED PUBLICATION" EVEN IF
 THE REFERENCES ARE NOT DISSEMINATED BY COPIES OR INDEXED IN A LIBRARY OR
 DATABASE**A publicly displayed document where persons of ordinary skill in the
 art could see it and are not precluded from copying it can constitute a "printed
 publication," even if it is not disseminated by the distribution of reproductions or
 copies and/or indexed in a library or database. 
 


As stated in *In re Klopfenstein,*
 380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 (Fed. Cir. 2004), "the key inquiry is
 whether or not a reference has been made ‘publicly accessible.’" Prior to the
 critical date, a fourteen-slide presentation disclosing the invention was printed and
 pasted onto poster boards. The printed slide presentation was displayed with no
 confidentiality restrictions for approximately three cumulative days at two different
 industry events. *Id.* at 1347, 72 USPQ2d at 1118. The court noted
 that "an entirely oral presentation at a scientific conference that includes neither
 slides nor copies of the presentation is without question not a 'printed publication'
 for the purposes of **[[pre-AIA] 35 U.S.C. § 102(b)](mpep-9015-appx-l.html#d0e302383)**. Furthermore, a presentation that
 includes a transient display of slides is likewise not necessarily a ‘printed
 publication.’" *Id.* at 1349 n.4, 72 USPQ2d at 1120 n.4. In
 resolving whether or not a temporarily displayed reference that was neither
 distributed nor indexed was nonetheless made sufficiently publicly accessible to
 count as a "printed publication" under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**, the
 court considered the following factors: "the length of time the display was
 exhibited, the expertise of the target audience, the existence (or lack thereof) of
 reasonable expectations that the material displayed would not be copied, and the
 simplicity or ease with which the material displayed could have been copied."
 *Id.* at 1350, 72 USPQ2d at 1120. Upon reviewing the above
 factors, the court concluded that the display "was sufficiently publicly accessible
 to count as a ‘printed publication.’" *Id.* at 1352, 72 USPQ2d at
 1121. 
 


Similarly, in *Medtronic Inc., v.
 Barry* (891 F.3d 1368, 127 USPQ 1208) (Fed. Cir. 2018) a video and slides
 presented at two conferences prior to the critical date were found to be publically
 accessible. When considering the factors set forth in *In re
 Klopfenstein*, the court stated "[i]t may be relevant to determine
 whether … members were expected to maintain the confidentiality of received materials
 or would be permitted to share or even publicize the insights gained and materials
 collected…". *Id* at 127 USPQ2d at 1218. In addition, in
 *GoPro, Inc. v. Contour IP Holding LLC*, 908 F.3d 690, 128 USPQ2d
 1447 (Fed. Cir. 2018), the court stated that the expertise of the target audience is
 a factor in determining public accessibility but is not dispositive of the inquiry.
 "Rather, our case law directs us to also consider the nature of the conference or
 meeting; whether there are restrictions on public disclosure of the information;
 expectations of confidentiality; and expectations of sharing the information."
 *Id.* at 695, 128 USPQ2d at 1451. 
 


See also *Jazz Pharm., Inc. v. Amneal Pharm.,
 LLC*, 895 F.3d 1347, 127 USPQ2d 1485 (Fed. Cir. 2018) (A notice in the
 Federal Register which included instructions on accessing reference materials was
 sufficient for the materials to be considered publicly accessible; the Board did not
 need to find that specific persons actually received or examined the materials).
 


"We have consistently held that indexing or
 searchability is unnecessary for a reference to be a printed publication."
 *Jazz Pharm., Inc. v. Amneal Pharm., LLC*, 895 F.3d 1347, 1359,
 127 USPQ2d 1485,1493 (Fed. Cir. 2018). But see *Acceleration Bay, LLC v.
 Activision Blizzard Inc.*, 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed.
 Cir. 2018)(an electronic technical report did not constitute a "printed publication"
 because the indexing or searchability was deficient, and an interested skilled
 artisan, using reasonable diligence, would have to skim through potentially hundreds
 of titles in the same year, with most containing unrelated subject matter). 
 


Note that an oral presentation at a scientific meeting
 or a demonstration at a trade show may be prior art under **[35 U.S.C.
 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**’s provision: "otherwise available to the public." See
 **[MPEP
 § 2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**. "Trade shows are not unlike conferences - a
 trade show is directed to individuals interested in the commercial and developmental
 aspects of products. If one desires to examine certain new products on the market,
 attending a trade show involving identical or similar products is a good option."
 *GoPro, Inc. v. Contour IP Holding LLC*, 908 F.3d 690, 694, 128
 USPQ2d 1447, 1451 (Fed. Cir. 2018). 
 




# 2128.02 Date Publication Is Available as a Reference [R-10.2019]

**I.** **DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF ROUTINE BUSINESS
 PRACTICES**Evidence showing routine business practices can be used to establish
 the date on which a publication became accessible to the public. Specific evidence
 showing when the specific document actually became available is not always necessary.
 *Constant v. Advanced Micro-Devices,**Inc.,* 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), *cert.
 denied,* 988 U.S. 892 (1988) (Court held that evidence submitted by Intel
 regarding undated specification sheets showing how the company usually treated such
 specification sheets was enough to show that the sheets were accessible by the public
 before the critical date.); *In re Hall,* 781 F.2d 897, 228 USPQ 453
 (Fed. Cir. 1986) (Librarian’s affidavit establishing normal time frame and practice
 for indexing, cataloging and shelving doctoral theses established that the thesis in
 question would have been accessible by the public before the critical date.);
 *In re Lister,* 583 F.3d 1307, 1317, 92 USPQ2d 1225, 1231-32
 (Fed. Cir. 2009) ("The government urges us that it is appropriate in this case to
 presume that the manuscript information was added to the Westlaw and Dialog databases
 prior to the critical date because the critical date was more than a year after the
 certificate of registration was granted. However, absent any evidence pertaining to
 the general practices of the Copyright Office, Westlaw, and Dialog, or the typical
 time that elapses between copyright registration, inclusion in the Copyright Office’s
 automated catalog, and subsequent incorporation into one of the commercial databases,
 any presumption along those lines would be pure speculation."). 
 

**II.** **A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMES AVAILABLE AS PRIOR ART ON DATE
 IT IS RECEIVED BY A MEMBER OF THE PUBLIC**A publication disseminated by mail is not prior art until it is
 received by at least one member of the public. Thus, a magazine or technical journal
 is effective as of the date when the first person receives it, not the date it was
 mailed or sent to the publisher. *In re Schlittler,* 234 F.2d 882,
 110 USPQ 304 (CCPA 1956). 
 



[[top]](#top)


, 
# 2128.01 Level of Public Accessibility Required [R-10.2019]


The statutory phrase "printed publication" has been
 interpreted to mean that before the critical date the reference must have been
 sufficiently accessible to the public interested in the art; dissemination and public
 accessibility are the keys to the legal determination whether a prior art reference was
 "published." *Constant v. Advanced Micro-Devices, Inc.,* 848 F.2d 1560,
 1568, 7 U.S.P.Q.2d 1057, 1062 (Fed. Cir. 1988)
 

**I.** **A THESIS PLACED IN A UNIVERSITY LIBRARY OR A DOCUMENT PLACED IN AN ONLINE
 DATABASE MAY BE PRIOR ART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC**A doctoral thesis indexed and shelved in a library is sufficiently
 accessible to the public to constitute prior art as a "printed publication."
 *In re Hall,* 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even
 if access to the library is restricted, a reference will constitute a "printed
 publication" as long as a presumption is raised that the portion of the public
 concerned with the art would know of the invention. *In re Bayer,*
 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).
 


In *In re Hall,* general library cataloging and
 shelving practices showed that a doctoral thesis deposited in university library
 would have been indexed, cataloged and shelved and thus available to the public
 before the critical date. Compare *In re Cronyn,* 890 F.2d 1158, 13
 USPQ2d 1070 (Fed. Cir. 1989) wherein doctoral theses were shelved and indexed by
 index cards filed alphabetically by student name and kept in a shoe box in the
 chemistry library. The index cards only listed the student name and title of the
 thesis. In *Cronyn,* the court held that the students’ theses were
 not accessible to the public because they had not been either cataloged or indexed in
 a meaningful way, e.g., by title or in some other way that bears a relationship to
 the subject of the thesis, but instead were cataloged by the researcher's name.
 Compare *In re Bayer,* 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) (A
 reference will constitute a "printed publication" as long as a presumption is raised
 that the portion of the public concerned with the art would know of the invention
 even if accessibility is restricted to only this part of the public. But
 accessibility to applicant’s thesis was restricted to only three members of a
 graduate committee. There can be no presumption that those concerned with the art
 would have known of the invention in this case.).
 


In determining whether a document in an online
 database is a printed publication, public accessibility is key. See
 **[MPEP §
 2128](s2128.html#d0e202564)**, subsection I. In *Voter Verified, Inc. v.
 Premier Election Sols., Inc.* the court found that "(i)ndexing is not ‘a
 necessary condition for a reference to be publicly accessible’; it is but one among
 many factors that may bear on public accessibility." *Voter Verified, Inc. v.
 Premier Election Sols., Inc.,* 698 F.3d 1374, 1381, 104 USPQ2d 1553, 1557
 (Fed. Cir. 2012) (quoting *In re Lister,* 583 F.3d 1307, 1312, 92
 USPQ2d 1225, 1228 (Fed. Cir. 2009)). The court further stated that "indexing is no
 more or less important in evaluating the public accessibility of online references
 than for those fixed in more traditional, tangible media". *Id.*


A document in an online database is not always deemed
 a printed publication. In *Acceleration Bay, LLC v. Activision Blizzard
 Inc.*, 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed. Cir. 2018), the court
 agreed with the Board that an electronic technical report did not constitute a
 "printed publication" within the meaning of **[(pre‑AIA) 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**. The
 court agreed with the Board that an interested skilled artisan, using reasonable
 diligence, would not have been able to find the technical report on the CSE Technical
 Reports Library website despite some indexing and search functionality on the website
 that permitted technical accessibility. Technical reports were listed only by author
 or year, and there was no evidence how many reports were in the Library’s database in
 1999. It was determined that at best, an artisan might have located the cited
 technical report by skimming through potentially hundreds of titles in the same year,
 with most containing unrelated subject matter, or by viewing all titles in the
 database listed by author, when the authors were not particularly well known. Also,
 the website’s advanced search form was found to be deficient because the ability to
 search keywords for author, title, and abstract fields was not reliable.
 

**II.** **ORALLY PRESENTED PAPER CAN CONSTITUTE A "PRINTED PUBLICATION" IF WRITTEN
 COPIES ARE AVAILABLE WITHOUT RESTRICTION**A paper which is orally presented in a forum open to all interested
 persons constitutes a "printed publication" if written copies are disseminated
 without restriction. *Massachusetts Institute of Technology v. AB Fortia,* 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985) (Paper orally
 presented to between 50 and 500 persons at a scientific meeting open to all persons
 interested in the subject matter, with written copies distributed without restriction
 to all who requested, is a printed publication. Six persons requested and obtained
 copies.). An oral presentation at a scientific meeting or a demonstration at a trade
 show may be prior art under **[35 U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**’s provision:
 "otherwise available to the public." See **[MPEP §
 2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**. 
 

**III.** **INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT "PRINTED
 PUBLICATIONS"**Documents and items only distributed internally within an
 organization which are intended to remain confidential are not "printed publications"
 no matter how many copies are distributed. There must be an existing policy of
 confidentiality or agreement to remain confidential within the organization. Mere
 intent to remain confidential is insufficient. *In re George,*
 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports disseminated
 in-house to only those persons who understood the policy of confidentiality regarding
 such reports are not printed publications even though the policy was not specifically
 stated in writing.); *Garret Corp. v. United States,* 422 F.2d 874,
 878, 164 USPQ 521, 524 (Ct. Cl.1970) ("While distribution to government agencies and
 personnel alone may not constitute publication ... distribution to commercial
 companies without restriction on use clearly does."); *Northern Telecom Inc.
 v. Datapoint Corp.,* 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990) (Four
 reports on the AESOP-B military computer system which were not under security
 classification were distributed to about fifty organizations involved in the AESOP-B
 project. One document contained the legend "Reproduction or further dissemination is
 not authorized." The other documents were of the class that would contain this
 legend. The documents were housed in Mitre Corporation’s library. Access to this
 library was restricted to those involved in the AESOP-B project. The court held that
 public access was insufficient to make the documents "printed publications.").
 

**IV.** **PUBLICLY DISPLAYED REFERENCES CAN CONSTITUTE A "PRINTED PUBLICATION" EVEN IF
 THE REFERENCES ARE NOT DISSEMINATED BY COPIES OR INDEXED IN A LIBRARY OR
 DATABASE**A publicly displayed document where persons of ordinary skill in the
 art could see it and are not precluded from copying it can constitute a "printed
 publication," even if it is not disseminated by the distribution of reproductions or
 copies and/or indexed in a library or database. 
 


As stated in *In re Klopfenstein,*
 380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 (Fed. Cir. 2004), "the key inquiry is
 whether or not a reference has been made ‘publicly accessible.’" Prior to the
 critical date, a fourteen-slide presentation disclosing the invention was printed and
 pasted onto poster boards. The printed slide presentation was displayed with no
 confidentiality restrictions for approximately three cumulative days at two different
 industry events. *Id.* at 1347, 72 USPQ2d at 1118. The court noted
 that "an entirely oral presentation at a scientific conference that includes neither
 slides nor copies of the presentation is without question not a 'printed publication'
 for the purposes of **[[pre-AIA] 35 U.S.C. § 102(b)](mpep-9015-appx-l.html#d0e302383)**. Furthermore, a presentation that
 includes a transient display of slides is likewise not necessarily a ‘printed
 publication.’" *Id.* at 1349 n.4, 72 USPQ2d at 1120 n.4. In
 resolving whether or not a temporarily displayed reference that was neither
 distributed nor indexed was nonetheless made sufficiently publicly accessible to
 count as a "printed publication" under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**, the
 court considered the following factors: "the length of time the display was
 exhibited, the expertise of the target audience, the existence (or lack thereof) of
 reasonable expectations that the material displayed would not be copied, and the
 simplicity or ease with which the material displayed could have been copied."
 *Id.* at 1350, 72 USPQ2d at 1120. Upon reviewing the above
 factors, the court concluded that the display "was sufficiently publicly accessible
 to count as a ‘printed publication.’" *Id.* at 1352, 72 USPQ2d at
 1121. 
 


Similarly, in *Medtronic Inc., v.
 Barry* (891 F.3d 1368, 127 USPQ 1208) (Fed. Cir. 2018) a video and slides
 presented at two conferences prior to the critical date were found to be publically
 accessible. When considering the factors set forth in *In re
 Klopfenstein*, the court stated "[i]t may be relevant to determine
 whether … members were expected to maintain the confidentiality of received materials
 or would be permitted to share or even publicize the insights gained and materials
 collected…". *Id* at 127 USPQ2d at 1218. In addition, in
 *GoPro, Inc. v. Contour IP Holding LLC*, 908 F.3d 690, 128 USPQ2d
 1447 (Fed. Cir. 2018), the court stated that the expertise of the target audience is
 a factor in determining public accessibility but is not dispositive of the inquiry.
 "Rather, our case law directs us to also consider the nature of the conference or
 meeting; whether there are restrictions on public disclosure of the information;
 expectations of confidentiality; and expectations of sharing the information."
 *Id.* at 695, 128 USPQ2d at 1451. 
 


See also *Jazz Pharm., Inc. v. Amneal Pharm.,
 LLC*, 895 F.3d 1347, 127 USPQ2d 1485 (Fed. Cir. 2018) (A notice in the
 Federal Register which included instructions on accessing reference materials was
 sufficient for the materials to be considered publicly accessible; the Board did not
 need to find that specific persons actually received or examined the materials).
 


"We have consistently held that indexing or
 searchability is unnecessary for a reference to be a printed publication."
 *Jazz Pharm., Inc. v. Amneal Pharm., LLC*, 895 F.3d 1347, 1359,
 127 USPQ2d 1485,1493 (Fed. Cir. 2018). But see *Acceleration Bay, LLC v.
 Activision Blizzard Inc.*, 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed.
 Cir. 2018)(an electronic technical report did not constitute a "printed publication"
 because the indexing or searchability was deficient, and an interested skilled
 artisan, using reasonable diligence, would have to skim through potentially hundreds
 of titles in the same year, with most containing unrelated subject matter). 
 


Note that an oral presentation at a scientific meeting
 or a demonstration at a trade show may be prior art under **[35 U.S.C.
 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**’s provision: "otherwise available to the public." See
 **[MPEP
 § 2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**. "Trade shows are not unlike conferences - a
 trade show is directed to individuals interested in the commercial and developmental
 aspects of products. If one desires to examine certain new products on the market,
 attending a trade show involving identical or similar products is a good option."
 *GoPro, Inc. v. Contour IP Holding LLC*, 908 F.3d 690, 694, 128
 USPQ2d 1447, 1451 (Fed. Cir. 2018). 
 


, 
# 2128.02 Date Publication Is Available as a Reference [R-10.2019]

**I.** **DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF ROUTINE BUSINESS
 PRACTICES**Evidence showing routine business practices can be used to establish
 the date on which a publication became accessible to the public. Specific evidence
 showing when the specific document actually became available is not always necessary.
 *Constant v. Advanced Micro-Devices,**Inc.,* 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), *cert.
 denied,* 988 U.S. 892 (1988) (Court held that evidence submitted by Intel
 regarding undated specification sheets showing how the company usually treated such
 specification sheets was enough to show that the sheets were accessible by the public
 before the critical date.); *In re Hall,* 781 F.2d 897, 228 USPQ 453
 (Fed. Cir. 1986) (Librarian’s affidavit establishing normal time frame and practice
 for indexing, cataloging and shelving doctoral theses established that the thesis in
 question would have been accessible by the public before the critical date.);
 *In re Lister,* 583 F.3d 1307, 1317, 92 USPQ2d 1225, 1231-32
 (Fed. Cir. 2009) ("The government urges us that it is appropriate in this case to
 presume that the manuscript information was added to the Westlaw and Dialog databases
 prior to the critical date because the critical date was more than a year after the
 certificate of registration was granted. However, absent any evidence pertaining to
 the general practices of the Copyright Office, Westlaw, and Dialog, or the typical
 time that elapses between copyright registration, inclusion in the Copyright Office’s
 automated catalog, and subsequent incorporation into one of the commercial databases,
 any presumption along those lines would be pure speculation."). 
 

**II.** **A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMES AVAILABLE AS PRIOR ART ON DATE
 IT IS RECEIVED BY A MEMBER OF THE PUBLIC**A publication disseminated by mail is not prior art until it is
 received by at least one member of the public. Thus, a magazine or technical journal
 is effective as of the date when the first person receives it, not the date it was
 mailed or sent to the publisher. *In re Schlittler,* 234 F.2d 882,
 110 USPQ 304 (CCPA 1956). 
 


]