IP Litigation Fall 2009 Newsletter

In re Lister: Public Accessibility of Prior Art Under35 U.S.C. § 102(b)
By Naikang Tsao

The Court of Appeals for the Federal Circuit's recent decision in In re Lister, 583 F.3d 1307 (Fed. Cir. 2009), provides important guideposts for assessing whether prior art is publicly accessible for purposes of the "printed publication" bar under § 102(b). The case is likely to be frequently cited by litigants asserting a § 102(b) Lister, defense.

The applicant, Dr. Lister, had submitted a manuscript of his invention — relating to a method of playing golf that permitted the use of a tee on most shots — to the U.S. Copyright Office more than a year before he filed his patent application. Based on this earlier disclosure, the Board of Patent Appeals and Interferences (BPAI) affirmed the patent examiner's § 102(b) rejection.