Reprinted with permission from CEP (Chemical Engineering Progress),…

Reprinted with permission from CEP (Chemical Engineering Progress), June 2008.
                                                                                       Patent
Copyright © 2008 American Institute of Chemical Engineers (AIChE).

                                                                                                   Update

Posting on an Internet Server
      May Affect Your Patent Rights
T
        he pressure in academia and                        occurred much earlier, however,             by someone who knew of its existence.
        research institutions to "publish                  instructing authors to make their sub-      Likewise, a thesis listed only in an
        or perish" may tempt some                          missions via email. The SRI authors         alphabetical index by the author's
researchers to publish first and seek                      did so on Aug. 1, 1997, and provided a      name was also deemed not publicly
patent coverage later. United States                       backup copy of the paper on the SRI         accessible, since the name bore no rela-
patent law accommodates this urge by                       FTP server. The server was publicly         tionship to the subject of the thesis. On
offering a grace period of one year                        available and contained the backup          the other hand, patent applications that
after the first publication of an inven-                   copy more than one year before the          were published abroad, and properly
tion in which to file a patent applica-                    patent filing date, but the backup copy     classified, indexed or abstracted, were
tion. When more than one year has                          was only accessible to those who were       considered publicly accessible, as were
passed, the grant of a patent is barred.                   given the full FTP address. When SRI        posters at a professional conference
This is known as the "printed publica-                     sued Internet Security Systems, Inc.,       since their purpose was to communi-
tion bar," in reference to the wording                     and Symantec Corp., the defendants          cate the relevant information to the
of the statute: "A person shall be enti-                   cited the Internet posting and argued       interested public.
tled to a patent unless ... the invention                  that the patents were invalid under the         The SRI paper might have been
was ... described in a printed publica-                    printed publication bar.                    available to someone with FTP know-
tion ... more than one year prior to                           The patent courts recognize that        how and knowledge of the subdirectory
the date of the application for patent"                    there are many ways in which a refer-       in which the paper was posted, but the
(35 U.S.C. § 102(b)).                                      ence can be disseminated to the public,     posting was not publicized or placed in
    However, the law was enacted more                      and the prevailing view is that "public     front of the interested public, and had
than 50 years ago, when the ways that                      accessibility" is the determining factor    only been made known to a few indi-
an invention could be made public                          of whether a reference invokes the          viduals to whom the authors had pro-
were far fewer than they are today.                        printed publication bar. In the words of    vided the full path and file name of the
Website publication is a case in point.                    the Federal Circuit (Bruckelmyer v.         paper. Noting that the posting was not
    SRI International, Inc., obtained four                 Ground Heaters, Inc.): "A given refer-      catalogued or indexed in any meaning-
patents on inventions related to cyber                     ence is `publicly accessible' upon a sat-   ful way and not intended for dissemi-
security and intrusion detection, specifi-                 isfactory showing that such a document      nation to the public, the court found the
cally a "computer-automated method of                      has been disseminated or otherwise          posting to be more non-accessible than
hierarchical event monitoring and anal-                    made available to the extent that per-      accessible, and held that without fur-
ysis within an enterprise network," i.e.,                  sons interested and ordinarily skilled in   ther facts about its accessibility, the
a tool for tracking malicious activity                     the subject matter or art exercising rea-   posting did not constitute a printed
across large internet networks. All four                   sonable diligence, can locate it."          publication bar.
patents arose from a single application                        The court in the SRI case was thus          The reliance on the specific facts
filed on Nov. 9, 1998.                                     faced with determining how the public       in this case demonstrates the risk
    Among the papers that the inven-                       accessibility standard should apply to a    that any outside disclosure can invali-
tors authored prior to that date was one                   paper that is posted on a publicly avail-   date a patent filed after the
                                                                                                                                             CEP
entitled "Live Traffic Analysis of                         able Internet server but not indexed        grace period.
TCP/IP Gateways," which SRI dis-                           other than by its file name. The court
played on its website on Nov. 10,                          reviewed previous case decisions relat-        This "Patent Update" was prepared by
1997, and presented at the Internet                        ing to graduate theses in university           M. Henry Heines, a chemical engineer and
Society's (ISOC) 1998 Symposium on                         libraries, patent applications published       patent attorney, and a partner in the law
                                                                                                          firm of Townsend and Townsend and Crew,
Network and Distributed Systems                            outside the U.S., and posters displayed        San Francisco, CA (Phone: (415) 576-0200;
Security. The postings on both the SRI                     at professional conferences. A graduate        E-mail: mhheines@townsend.com; Website:
website and the ISOC website quali-                        thesis that had not been catalogued or         www.henryheines.com). He is the author of
                                                                                                          two books, "Patent Empowerment for Small
fied for the grace period, since both                      placed on the library shelves had been         Corporations," published in 2001 by
were within the year preceding the                         held not "publicly accessible," because        Greenwood, and "Patents for Business: The
                                                                                                          Manager's Guide to Scope, Strategy, and
patent filing date. The call for papers                    a search would not have produced it            Due Diligence," published in January 2007
to be presented at the Symposium                           even if the search had been performed          by Praeger.


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