Documents in Canadian Patent File History "Accessible" for US Anticipation

Two drawings from an unpublished Canadian file history were found to be citable prior art, in a recent patent case before the US Federal Circuit Court of Appeals. In Bruckelmyer v Ground Heaters Inc., decided on April 20, 2006, the Court considered whether documents from a Canadian file history could be considered "printed publications" under §102 (b) so as to anticipate the claims of two US patents. TheUS patents in suit were filed by Bruckelmyer in 1995 and 1996, relating to a method of thawing frozen ground so that a layer of concrete can be laid on top of the ground. A Canadian application for a portable heating system was filed by Young in 1982, at a time before universal publication came into effect in Canada in 1989. As a result, the Young application itself was kept secret until it issued in 1983, when its file history then became searchable by the public. However, there was no evidence that the records in the file had been disseminated or copied, other than by the defendants. Two drawings in the Young application file history became the focus of the anticipation case. The drawings had in fact been cancelled in the course of prosecution of the Young application and are not referred to in the patent that issued. In spite of the relative obscurity of the prior art, the majority of the Court held that the drawings were "printed publications" and were "publicly accessible" through the Canadian Patent Office in Hull, Quebec, thus invalidating Bruckelmyer's patents. See Bruckelmyer v Ground Heaters, Inc (05-1412), US Court of Appeals (Federal Circuit), available at http://www.fedcir.gov/opinions/05-1412.pdf. Summary by: Jennifer Jannuska