Printed Publication as Prior Art: PTAB Guidance, Practical Considerations for Patent Holders and Patent Challengers

Description

The question of what constitutes prior art in a printed publication is significant in many patent validity challenges. A patent claim will be invalid if the claimed invention was, among other things, "patented, [or] described in a printed publication ... before the effective filing date of the claimed invention." It must be demonstrated and supported by evidence that a reference qualifies as a printed publication.

In Jazz Pharm. v. Amneal Pharm. (Fed. Cir. July 13, 2018), the Federal Circuit reiterated that whether a reference is a printed publication is a "case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public." The court affirmed the PTAB's holding that the FDA advisory meeting minutes, transcripts, and slides were sufficiently accessible to persons of ordinary skill in the art because the materials at issue were available through hyperlinks provided in a Notice in the Federal Register, among other things. Further, there was no reasonable expectation of confidentiality because the materials were distributed via public domain sources with no restrictions on access.

Listen as our authoritative panel of patent attorneys addresses the public accessibility standard and evidence relied upon by courts and other tribunals in considering whether a reference qualifies as "printed publication" prior art. The panel will also offer guidance for demonstrating (or arguing against) printed publication prior art.