New Jersey Law Journal October 28, 2002

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New Jersey Law Journal

October 28, 2002

HEADLINE: Internet Publication Provides Inexpensive Protection
Placing an invention in the public domain via the Web can limit exposure to patent infringement suits

BYLINE: By JonathanBickThe author is counsel to Brach, Eichler, Rosenberg, Silver, Bernstein, Hammer & Gladstone of Roseland and is an adjunct professor of Internet law at Pace Law School and Rutgers Law School. He is also the author of 101 Things You Need To Know About Internet Law [Random House 2000].

An American Intellectual Property Law Association survey found that the nationwide median estimate of total cost through the end of discovery in patent infringement cases was $300,000 and that attorneys' fees for patent litigation could exceed $1 million. It may be possible to avoid this litigation cost by using the Internet to place an invention in the public domain.

Internet publication offers two legal options to parties seeking to avoid becoming unsuccessful defendants in a patent infringement case. The first is to publish appropriate information on the Internet and use it to block the granting of a patent. The elimination of a patent grant will in turn eliminate the possibility of being a defendant in an infringement case associated with that patent. The second option is to identify appropriate information that has been published on the Internet and use it to secure a pre-emptive resolution of a patent infringement case. A pre-emptive resolution normally takes the form of an out-of-court settlement in the form of a cross-licensing agreement between the parties.

Alternatively, Internet publication may precipitate a patent interference action. Patent interference actions normally severely reduce or eliminate the possibility of being a defendant in an infringement case associated with that patent. A patent interference is a proceeding before the Patent and Trademark Office to determine the priority of the patent.

Producers of tangible and intangible products, including computer software, who desire to reduce or eliminate patent related litigation should consider publishing information about their products, including descriptions of their goods and their processes, on the Internet. The published information should stress the novelty and the nonobviousness of the product or the process.

The Internet publication need not disclose every element of a claimed invention. It is sufficient that the publication note that the product or process was actually reduced to practice.

A publication is still considered prior art for all that it teaches, despite the fact that it fails to disclose every element of a claimed invention. The Internet description will be considered anticipatory and hence is sufficient when its disclosure is both specific and enabling with regard to the particular subject matter at issue.

In effect, a prima facie case is made whenever a publication is shown to contain a disclosure that is specific as to critical elements of a patent application claim.

In the event those who have published timely and appropriate information on the Internet learn that someone is trying to patent the goods they make or sell, they need only inform the Patent and Trademark Office of its Internet publication to prevent the granting of a patent.

In the event a manufacturer or seller is subject to a patent litigation suit for items whose descriptions were timely and appropriately e-published, it need only bring these facts to a germane court to achieve a quick and favorable outcome. Typically, such action results in a settlement between the parties.

35 U.S.C. 102 requires that the invention cannot be in the hands of others, nor can it have been disclosed to the public domain prior to the application of the patent.

The meaning of public domain for purposes of patent law may be quite different from that of public domain for purposes of trade secrecy. Publicity is not required for the former but is required for the latter. An invention may lie in the public domain because of its subject matter even though it is not yet generally known, whereas for trade secrecy purposes, the pertinent information must be known to some element of the public.

Section 102 [a-b] generally states that printed publications are considered to be part of the public domain. Section 102[a] precludes the granting of a patent if someone other than the applicant has published a description either prior to the applicant's invention date or more than one year before the inventor filed an application for a patent in the United States.

Not all Internet publications can be considered publications for patent law purposes. Courts consider whether an Internet posting was indexed, authenticated, copied and accessed by the general or relevant public.

Public policy, as reflected in court findings, suggests that if information is in a printed publication, it is considered to be in the public domain because such information is recorded, distributed and permanent [see Ex parte Hershberger, 96 U.S.P.Q. 54 [1952]].

Until a few years ago, printed publications meant books and magazines. However, researchers today increasing rely on the Internet.

Courts are augmenting what is considered to be in the public domain for patent purposes and are more frequently allowing Internet information to have printed publication status.

35 U.S.C. 101 through §103 requires that the information be useful, novel and nonobvious. The novelty requirement as set forth in 35 U.S.C. 102 bars the U.S. Patent and Trademark Office from granting a patent if the invention was described by another in a printed publication, anywhere in the world, before the date of the invention by the applicant.

This section also prevents the USPTO from granting a patent for an invention that was described by anyone in a printed publication, anywhere in the world, more than one year prior to the filing date of the applicant's application for a patent in the United States.

Most attorneys who prepare patents normally consider information found on the Internet since they consider it to be prior art. As such, current and past patents will probably be found invalid if it is found that Internet postings constitute printed publications. It should be noted that courts have not conclusively addressed the question of whether information available via the Internet falls within the definition of a printed publication and, thus, becomes part of the public domain.

In Philips Electronics and Pharmaceutical Indus. Corp. v. Thermal and Elec. Indus., Inc., 450 F.2d 1164 [3d Cir. 1971]], the court found that "the traditional process of printing is no longer the only" way to have something published. The court noted that the concept of public dissemination of the document -- and its availability and accessibility to persons skilled in the subject matter or art -- must also be considered.

Today, the words printed and publication mean "probability of dissemination" and "public accessibility," respectively. But not all Internet postings will be considered printed publications for patent purposes.

Consider Regents of the University of California and Wright Mfg. Co. v. Howmedica, Inc., 530 F. Supp. 846 [D.N.J. 1981], in which slides shown at a lecture were held not to be printed publications.

The court found that the slides were shown for an insufficient amount of time to disclose the invention to the extent that a person skilled in the art would be able to make or use the invention. Thus, it is safe to conclude that a temporary posting of a message in an online chat room or an instant messenger program may not necessarily constitute a printed publication for patent purposes.

However, it appears that other Internet information, such as bulletin board posts and Web page information, would constitute a printed publication because these are not temporary and, in effect, are designed to be accessed over a period of time.

It is difficult to assess whether e-mails would be considered printed publications because they have characteristics of both instant messaging and bulletin board postings. The greater the distribution to the appropriate class of readers, the greater the likelihood that an e-mail would be considered a publication.

A court could rely on Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104 [Fed. Cir. 1985], to find certain e-mails to be printed publications. In AB Fortia, the printed publication in question was a paper distributed to between 50 and 500 cell culturists who attended a conference. The court held the paper to be a printed publication.

Courts will have to look at each Internet communication to determine if it can be considered a printed publication. To reiterate, an Internet posting more likely will be considered to be a printed publication for patent purposes if it is:

* indexed by a major Internet search engine;

* amenable to authentication;

* referenced or hyperlinked to other Internet locations; and

* visited by the relevant public.

These attributes allow a court to be certain that the Internet communication was available to the public on its stated date of publication. It also allows a court to ensure that the communication was not modified thereafter. Needless to say, private Web sites, which are not designed to be accessible by the public, should be treated differently than public Web sites.

It should be noted that Internet chat lounge communications might also meet the case law requirements of a printed publication. Such transitory information could be considered to be a printed publication if the relevant public is present at the time the words are transmitted.