US Copyright Office Registration Does Not Qualify As a “Printed Publication” under § 102

In re Lister, No. 2009-1060 (Fed. Cir. Sept. 22, 2009):

Holding:

US Copyright Office’s automated catalog alone is insufficient to support a finding of public accessibility due to an inadequate index, because the automated catalog is not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work. Slip op. at 12-13.

Facts:

The inventor filed a copyright registration more than one year before filing a patent application. The PTO rejected the patent application under § 102 based on the submitted manuscript for the copyright registration. However, US Copyright Office’s automated catalog was not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work. Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases. Users of the Westlaw and Dialog databases could perform keyword searches of the titles, but not the full texts, of the works.

Comments:

This case makes clear that because US Copyright Office’s automated catalog is not adequately indexed to qualify as a “Printed Publication” under § 102. However, because Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases, and allow users to perform keyword searches of the titles, Westlaw and Dialog databases may qualify as a “Printed Publication” under § 102. In this case, however, the PTO did not prove when the reference became available in the Westlaw and Dialog databases, and therefore cannot prove that the reference is a § 102 reference.