The Konda case: availability of provisional applications

From the CAFC

The Board subsequently denied Mr. Konda’s requests for rehearing. It reiterated that under 37 C.F.R. § 1.14(a)(1)(vi), a person who makes a written request and pays the appropriate fee “may be provided” “[a] copy of the application as originally filed” of a provisional application like the ’394 provisional. SAppx. 39 (quoting 37 C.F.R. § 1.14(a)(1)(vi)). The Board also noted that the Manual of Patent Examining Procedure (MPEP) reflected this principle. Id. (quoting MPEP § 103(III) (8th ed., Rev. 7, July 2008)). The Board concluded that a copy of the ’394 provisional “as originally filed” became available as of the publication of the ’756 PCT, regardless of Mr. Konda’s personal consent. SAppx. 39–40.

(...) We review the Board’s legal conclusions de novo and its factual determinations for substantial-evidence support. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “Whether an asserted anticipatory document qualifies as a ‘printed publication’ under [35 U.S.C.] § 102 is a legal conclusion based on underlying factual determinations.” Id. (quoting Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002)). A “printed publication” under the applicable version of § 102(b) must have been publicly available at the pertinent time, and that requirement is met if the document was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, [could have] locate[d] it.” Kyocera Wireless Corp. v. Int’l. Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).

Section 1.14(a) of 37 C.F.R., quoted above, provides that a person may, upon written request and payment of a fee, have access to a copy of an unpublished pending application “as originally filed” if that unpublished pending application was incorporated by reference into an international patent application published in accordance with PCT Article 21(2). It is undisputed that the ’756 PCT was such an international patent application and that it incorporated the ’394 provisional by reference. That language clearly supports the Board’s conclusion here that the ’394 provisional was publicly accessible. And a contrary result is not supported by the next sentence of the regulation (on which Mr. Konda relies). That sentence provides that an inventor’s written authorization is required for provision of access to the “paper file,” but the regulation clearly distinguishes the “paper file” (i.e., the whole file history) from the “application as originally filed.” Under the language of § 1.14(a)(1)(vi), therefore, the ’394 provisional as originally filed was accessible without Mr. Konda’s written authorization in the incorporation-by-reference circumstance delineated, while the complete file history was not.