As I explained in my prior post on the “printed publication” aspect of section 102, “we should interpret section 102’s ‘printed publication’ requirement such that we confer ‘printed publication’ status on information that is strongly likely cheaper to locate in response to a problem than to recreate from scratch in response to that problem.” This approach is an effort to link our interpretion of “printed publication” to our basic reasons for having novelty requirement in the first place.

Before I talk about the recent Bruckelmyer decision, I want to talk about In re Wyer, 655 F.2d 221 (CCPA 1981), the case on which Bruckelmyer relies quite heavily. Indeed, Bruckelmyer refers to Wyer as “[c]ontrolling.” Slip op. at 8. More below the fold.

In Wyer, the CCPA confronted the question whether a laid-open Australia patent application is a “printed publication” under section 102(b). The Australia patent application, which was filed by the same applicant as the U.S. patent application in question and contained the same disclosure, had been laid open for public inspection. In addition to a microfilm master, six different Australia patent office locations hosted microfiche copies of the laid-open patent application. The Australia patent office also published an abstract of the application, which abstract was classified and indexed by subject matter; it also provided the text of claim 1 of the application. Was this a “printed publication”? If yes, Wyer’s U.S. application, filed more than two years after his Australia application was laid open, was unpatentable.

The Patent Office, applying the two-tiered approach from prior cases, analyzed both whether the fiche copies were “printed” and whether they were “publications.” Under the two-tiered approach, there were colorable arguments that the microfiche copies sitting at the Australia patent office locations were neither “printed” nor “publications.”

The CCPA cast aside the two-tiered approach. Instead, the question of whether something is a “‘printed publication’ should be approached as a unitary concept.” 655 F.2d at 226. As the court explained,

The traditional dichotomy between “printed” and “publication” is no longer valid.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.

Id. (Note how the Wyer court returns to policy and first principles to ensure that a statutory provision from 1836 continues to fulfill the purpose Congress intended. This is what courts do, and should do, as I’ve indicated.)

Under this unitary concept, “the question to be examined … is the accessibility to at least the pertinent part of the public, of a perceptible description of the invention, in whatever form it may have been recorded.” Id. “Access,” in turn, “involves such factual inquiries as classification and indexing.” Id. Can people in the art, “exercising reasonable diligence,” id., locate and understand the reference? If so, it’s publicly accessible.

Wyer’s Australia patent application was publicly accessible because the abstract, which had been properly classified and indexed, would lead the interested public directly to the laid-open application at the Australia patent office. This abstract thus played a critical role, as a readily findable flag that would alert interested artisans to look at the underlying application.

How should Wyer apply to the situation where the interested public sees, not an indexed abstract, but a full-text copy of an issued foreign patent?  Is a drawing that is in the publicly inspectable prosecution history file of that foreign patent, but not in the foreign patent itself, publicly accessible?  Put another way, is the drawing something that people in the art would find “exercising reasonable diligence”?  These are precisely the questions that Bruckelmyer raises, and I’ll consider them in a future post.