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[Kaitlin]

Hi all,

Question came up in the Copyright Forum as to whether registering a text or illustration with the Copyright Office (assuming it revealed sufficient information about an invention) would count as "publication" for patent application purposes. 

That is, if someone mistakenly submitted a write-up/illustration of their invention for copyright registration, thinking that would protect the idea instead of just the way the text was written and the picture drawn, would that start the clock running for the one-year-bar for purposes of a patent application on the same invention? 

A work does not have to be "published" in the usual non-term-of-art sense in order to be registered with the Copyright Office, but the Copyright Office does make the deposit of registered works available to the public for viewing.  On the other hand, people need to make a special request for this service (see "fee-based services" in http://www.copyright.gov/circs/circ06.pdf) and I believe the fee for the service is fairly high. 

So, while the text would be viewable by the public, there are some barriers to viewing it which could make the likelihood of it being viewed fairly low. 

Assuming the author doesn't actively "publish" the work in the lay sense of the term as used in the book trade, will he have "published" it in the legal sense by submitting it as a deposit with the Copyright Office?  My first reaction was "d-n straight!"; now I'm wondering.

Your thoughts?
Thanks!

[DogDayPM 9er9er9er]

... will he have "published" it in the legal sense by submitting it as a deposit with the Copyright Office?  My first reaction was "d-n straight!"; now I'm wondering.

I had your first reaction, "publicly available is available, even if only to a selected subset of the public."  But now I'm not so sure. 
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2128_01.htm#sect2128.01. 
You may have an argument based on lack of indexing/cataloging, such that those for whom the invention would be of interest might not be able to find it? (See the cases cited in the MPEP link which go both ways).  I don't know how or to what extent the (C) database is searchable.  Is it a case where you must already know the name of the thing you are searching for, or other bibliographic info, or else you won't find it?

But don't forget your assumption (reveals enabling disclosure) may be true only for certain aspects of the invention.  Other undisclosed aspects may be non-obvious even in view of the registration submission.  In the same situation I might file a patent app. with dual claim sets (claims disclosed by the (C) reg. for use in those countries having grace periods or for which the (C) reg. does not count as an available publication, and a set of claims to the undisclosed matter for countries with no grace periods where the (C) reg. counts as a publication).

[Kaitlin]

Thanks, DogDay. 
The copyright post wasn't as clearly expressed as it might have been, so I was assuming worst case scenario for the disclosure and best case scenario for the patentability of the invention in my query.  The original post is at http://www.intelproplaw.com/ip_forum/index.php/topic,12242.0.html .

[dablueman]

It's my personal (not legal) opinion that any deposit in the copyright registrar would trigger the 1 year bar in 35 USC §102. By sending something into the copyright office you are depositing your writings into the Library of Congress (copyright office is located in the Library). It is searchable, for free, from anywhere in the world back to 1978 on the website. You can also go to the Library of Congress and search the records there by yourself (without a fee) and make copies on the their coin-operated copy machines.

If it was me I'd make sure that you file for a patent before the 1 year limit if the writings you submitted to the copyright office teach the whole invention or make the invention obvious to the mythical person having ordinary skill in the art.

[Kaitlin]

By sending something into the copyright office you are depositing your writings into the Library of Congress (copyright office is located in the Library). It is searchable, for free, from anywhere in the world back to 1978 on the website. You can also go to the Library of Congress and search the records there by yourself (without a fee) and make copies on the their coin-operated copy machines.

I used to think that was the case--at least re the hardcopies, but I now gather that I -- and you -- are wrong about that.  While the Library of Congress is open to the public, and while all copyrighted works are deposited at that location, not all deposits make their way into circulation or even are retained.  (And what is searchable through the internet, of course, would only be the registration information, presumably including the author and title of the work, but certainly not the full text.)  I'm not sure, but I'm guessing that works which are submitted for an ISBN number may be the ones that get into the stacks for circulation, and but apparently whether to submit for an ISBN is the choice of the author.
See the link I referenced above, at which you'll find the following:

Copies of Deposits
  All requests for copies of deposits should be submitted to the Records Research and Certification Section. The Copyright
Office does not retain all works deposited for copyright registration. The Office will provide certified or uncertified
copies of published or unpublished works deposited in connection with a copyright registration and held in the Office’s
custody only when one of the following three conditions has been met:
  1 Written authorization is received from the copyright claimant of record, his or her designated agent, or the
owner of any of the exclusive rights in the copyright, as long as this ownership can be demonstrated by written
documentation of the transfer of ownership.  If the transfer of the copyright is recorded in the
Copyright Office, please include, if possible, the volume and page numbers and approximate year of recordation.
Without that information, a search of the Copyright Office files will be necessary, and a search fee will be
required.
  2 The Copyright Office Litigation Statement Form is completed and received from an attorney or authorized
representative in connection with litigation, actual or prospective, involving the copyrighted work. The following
information must be included in such a request: (a) the names of all parties involved and the nature of
the controversy, and (b) the name of the court in which the actual case is pending. In the case of a prospective
proceeding, the requestor must give a full statement of the facts of controversy in which the copyrighted work is
involved, attach any letter or other document that supports the claim that litigation may be instituted, and
make satisfactory assurance that the requested reproduction will be used only in connection with the specified
litigation.
  Contact the Records Research and Certification Section for a Litigation Statement Form. This form must be used.
No substitute will be permitted. The form must contain an original signature and all information requested for
the Copyright Office to process a request.
  3 A court order is issued for a reproduction of a deposited article, facsimile, or identifying portion of a work that is
the subject of litigation in its jurisdiction. The order must be issued by a court having jurisdiction over a case in
which the copy is to be submitted as evidence.  [....]

United States Copyright Office, Obtaining Access to and Copies of Copyright Office Records and Deposits http://www.copyright.gov/circs/circ06.pdf (on line 7/24/09)

[bleedingpen]

http://www.cafc.uscourts.gov/opinions/09-1060.pdf

Enjoy

[DogDayPM 9er9er9er]

http://www.cafc.uscourts.gov/opinions/09-1060.pdf

Holy cow completely SPOT ON, good discussion of the relevant matters.  Thanks much for bringing this our way.  Did you just stumble on it, or were you already aware it was pending?

[bleedingpen]

http://www.cafc.uscourts.gov/opinions/09-1060.pdf

Holy cow completely SPOT ON, good discussion of the relevant matters.  Thanks much for bringing this our way.  Did you just stumble on it, or were you already aware it was pending?

patentlyo and patenthawk both reported on it.

[dablueman]

http://www.cafc.uscourts.gov/opinions/09-1060.pdf

Enjoy

So it looks like filling does trigger the 1 year bar with a simple call to the Dialog rep. and a fax.

[Kaitlin]

Talk about on point! Thanks so much, bleedingpen! 
I've cross-posted the reference to the copyright forum.