What is a “Printed Publication?”

In a November 1, 2018 modification of an earlier opinion, the Federal Circuit has provided additional guidance on what constitutes a “printed publication” for prior art purposes.  GoPro, Inc. v. Contour IP Holding LLC (Fed. Cir. 2018).

Under (pre-AIA) 35 U.S.C. § 102(b), if an invention was described in a printed publication more than one year prior to the date of application for patent in the United States, an applicant is not entitled to a patent.[1]

In this case, a certain GoPro® sales catalog for digital cameras was held to be a prior art printed publication.  The catalog was available at a trade show for action sports vehicles and was displayed and available at the GoPro® booth at the trade show.  Since the trade show was only open to dealers of such vehicles, Contour argued that those attending the trade show would not be of ordinary skill in the digital camera field and thus that the catalog does not constitute a printed publication.  The Federal Circuit disagreed.

The Federal Circuit has previously interpreted the meaning of “printed publication” broadly, holding that even relatively obscure documents qualify as prior art so long as the relevant public has a means of accessing them.  A reference is considered publicly accessible if members of the relevant public could obtain the information if they wanted to.

In this case, the Federal Circuit clarified that there is no requirement to prove that particular members of the public actually received the information.  There is also no requirement that the catalog be distributed to or received by an ordinarily skilled artisan.  Even if no one of ordinary skill in the digital-camera art attended the tradeshow, it is not dispositive of the issue of whether the catalog is a printed publication.  Here the catalog was disseminated with no restrictions and was intended to reach the general public.  Such is sufficient to constitute a printed publication.  Actual receipt of the catalog by   one having ordinary skill in the relevant art or availability to an ordinarily skilled artisan is not dispositive of the issue.

This decision is another reminder for applicants to file a patent application before disclosure of the invention in any type of setting.

Images feature stunt doubles. No patent attorneys were harmed in the making of the above gif.

[1] The AIA maintains a similar statute:  under (AIA) 35 U.S.C. § 102(a)(1), if an invention is described in a printed publication before the effective filing date of the invention, an applicant is not entitled to a patent.  N.B.:  This prohibition in AIA 35 U.S.C. § 102(a)(1) is subject to exceptions provided in (AIA) 35 U.S.C. § 102(b)(1).

gif source: http://yahoosports.tumblr.com/post/75870397636/u-s-olympians-are-already-shredding-up-sochi