Does a research paper make a patent obvious?

A patent is a set of exclusive rights granted to the inventor of an invention. To be granted a patent in the United States and inventor must file a patent application with the United States Patent and Trademark Office. The patent application must demonstrate that the invention meets all the requirements for a patent to be granted. If the Patent and Trademark Office determines that the invention is new, useful and not obvious, then the patent application will be granted. The owner of the patent is granted the exclusive right to make, use, sell, distribute or import the invention in the United States.

Whether or not an invention is obvious is a deceptively simple requirement. Hindsight is using knowledge of the present to claim that something in the past was obvious. It is a difficult task to avoid subconscious reliance on hindsight when reviewing a patent application for obviousness. For that reason the patent obviousness requirement has several tools to inoculate against hindsight.

An invention is considered obvious and not patentable when it is known to the public. An invention is obvious if the differences between the invention sought to be patented and the prior art are such that the invention as a whole would have been obvious at the time a patent application is filed describing the invention. Prior art is any evidence that an invention is already known. Prior art does not need to exist physically or be commercially available. It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to an invention. However, the prior art must be publicly accessible. Secret information does not qualify as prior art.

A case which illustrates when a publication does not qualify as prior art is ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC., 2017-2084 (C.A.F.C. 2018). The case revolves around patents on broadcasting information though a network owned by Acceleration Bay. Blizzard challenged the validity of the patents by filing inter partes reviews. Blizzard presented several pieces of prior art to demonstrate that the patents were obvious. The Patent Trial and Appeal Board accepted some of Blizzard’s prior art and determined that several of the patent claims were obvious, but the Patent Trial and Appeal Board declined to accept some of the prior art that Blizzard submitted. Specifically the Patent Trial and Appeal Board did not accept a technical research paper written by a university student by Lin. The paper was not accepted because the paper was cataloged at the university in a way that was very difficult to access. Because the Lin publication was not accepted as prior art, some of Acceleration Bay’s patent claims remained valid. Blizzard appealed the Board’s decisions holding that the Lin article is not a printed publication under 35 U.S.C. § 102(a) to the Court of Appeals for the Federal Circuit.

The Federal Circuit agreed with the Patent Trial and Appeal Board. Lin’s paper was filed at the university in a way that made it extremely difficult to locate based on the content of the publication. Lin’s paper was uploaded to the university computer science department’s website in 1999 and indexed based on the order in which it was received. The website had some rudimentary search functions, but they were unreliable. Hundreds of other papers would have to be reviewed to find Lin’s paper. While Lin’s paper was technically available to the public it was not publicly accessible. For a publication to be considered prior art it must be disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.

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