What Is A “Printed Publication” In Relation To Patent Novelty?

In the United States, one of the requirements to get a patent is that the claimed invention must not have been previously “described in a printed publication.” See 35 U.S.C. § 102(a)(1). While seeming a simple requirement, the question many inventors have is “what does “a printed publication” actual mean?” Intuitively, inventors understand that a textbook, a newspaper, or a journal are all “printed publications”, but the question is really “what else qualifies?”

The Federal Circuit recently considered the question again in Acceleration Bay, LLC v. Activision Blizzard, Inc., restating that “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’”. The Federal Circuit held that “A reference is 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.”

In Acceleration Bay, the issue was whether a technical report posted to a technical reports webpage of the Computer Science and Engineering department of the University of California San Diego was publicly accessible. The Court found that the technical reports webpage made available hundreds of reports, but listed them merely by author and year, and afforded only limited searching capability. The technical reports covered many different topics, and without opening any given report one could not determine the subject matter of that report from the technical reports webpage.

The Federal Circuit held that while the technical reports webpage was capable of being accessed and was indexed by author and year, the technical reports webpage was not meaningfully indexed such that an interested artisan exercising reasonable diligence would have found any specific technical report. Therefore, the technical report at issue was not a “printed publication” merely because it existed on the technical reports webpage.

The take away for inventors is that “a printed publication” is more than just textbooks, newspapers, and journals, but is not every scrap of paper ever written or item uploaded to a database.

The case is Acceleration Bay, LLC v. Activision Blizzard, Inc. (Fed. Cir. 2018). The full text of the decision is here.