In re Wyer
655 F.2d 221, 210 U.S.P.Q. (BNA) 790, 70 A.L.R. Fed. 786 (1981)
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Rule of Law:
A document may be considered a "printed publication" under 35 U.S.C. § 102(b) if it is sufficiently accessible to the public, regardless of the specific technology used for its storage or duplication; the focus is on public accessibility and dissemination, not the traditional method of printing.
Facts:
- On March 13, 1972, the appellant filed an Australian patent application for a 'Cable Junction Box' with a provisional specification.
- On February 28, 1973, the appellant filed a complete specification with claims for the Australian application.
- On August 29, 1974, more than one year before the U.S. application was filed, the Australian Patent Office laid the entire application open to public inspection.
- The Australian Patent Office created microfilm copies of the application, from which it produced six diazo copies (a type of photographic reproduction).
- One diazo copy was retained at the main Australian Patent Office, and the other five were distributed to its sub-offices.
- Equipment was available to the public at the main office and all sub-offices to view the diazo copies on a display screen.
- The public could also purchase enlarged paper copies of the application, which were produced on demand.
Procedural Posture:
- The appellant filed U.S. patent application serial No. 740,343 on November 9, 1976.
- A patent examiner rejected all claims under 35 U.S.C. § 102(b), finding the invention was described in a printed publication more than one year prior to the filing date.
- The appellant appealed the rejection to the United States Patent and Trademark Office (PTO) Board of Appeals.
- The Board of Appeals affirmed the examiner's rejection.
- The appellant appealed the Board of Appeals' decision to the United States Court of Customs and Patent Appeals.
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Issue:
Does a foreign patent application, made available to the public on microfilm with readily accessible viewing and copying equipment in multiple patent offices, constitute a 'printed publication' under 35 U.S.C. § 102(b) that would bar a subsequent U.S. patent application?
Opinions:
Majority - Rich, J.
Yes. A foreign patent application made publicly available on microfilm with adequate viewing and copying facilities constitutes a 'printed publication.' The court held that the traditional, separate analysis of 'printed' and 'published' is outdated. The modern, unitary concept of a 'printed publication' hinges on whether the document has been disseminated or made available to the extent that persons interested and skilled in the art can locate and comprehend the invention with reasonable diligence. In this case, the Australian application was classified, indexed, and made available in six different public locations with equipment for viewing and reproduction. This level of accessibility meant the invention was already in the possession of the public, thus qualifying the application as a prior art 'printed publication' under § 102(b).
Analysis:
This decision marks a significant modernization of the 'printed publication' standard in patent law, moving the analysis away from the physical form of a document to its functional accessibility. By treating 'printed publication' as a unitary concept focused on dissemination, the court adapted the statute to accommodate new technologies like microfilm, and by extension, future digital formats. This case established a flexible, fact-specific inquiry that requires evaluating whether an invention's description was reasonably accessible to the interested public, thereby broadening the scope of what can be considered invalidating prior art.
