As a patent attorney for over 20 years, I deal with prior art on a daily basis. Prior art is used in patent prosecution to determine if the invention claimed in a patent application is novel and non-obvious. During the patent drafting process, I as the attorney use a patentability search result to draft the description to highlight novel aspects of the invention and then to draft claims that avoid the prior art. After filing and during the patent prosecution process, a patent examiner at the patent office will conduct a search for prior art to identify any information that has been made available to the public before the filing date of the patent application. This includes published patents, articles, books, and other publicly available information. Interested in finding out how prior art impacts the patent application? Read on!
Prior Art in Patents
Prior art is an important concept in the world of patents. The word “prior” means occurring before, and the term art covers everything that is relevant to an invention.
Prior art refers to any information that has been made available to the public before the filing date of a patent application. This includes published patents, articles, books, and other publicly available information. The purpose of prior art is to ensure that patents are only granted for truly novel and non-obvious inventions.
When a patent application is filed, a patent examiner will conduct a search for prior art to determine if the invention is already known or if it is obvious in light of existing knowledge. If the examiner finds prior art that is identical or similar to the invention claimed in the patent application, the application may be rejected.
It is important to note that, the prior art search is not limited to the country where the patent application is filed, but worldwide.
When writing a patent application, it is important to be aware of any prior art that may be relevant to the invention. This can include any patents, publications, or other information that may be similar to the invention. The applicant should also be prepared to demonstrate that the invention is novel and non-obvious in light of the prior art.
In summary, prior art is any information that has been made available to the public before the filing date of a patent application. It is important to be aware of any prior art that may be relevant to the invention and to be able to demonstrate that the invention is novel and non-obvious in light of the prior art in order to increase the chances of a patent being granted.
Every invention must be new, useful and non-obviousness to be eligible for patent protection. Before filing patent applications, innovators must establish the novelty of their inventions. Prior art searches are necessary to find all prior art related to the inventions.
According to the European Patent Office, prior art is any evidence that your 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 your invention.
Uses for Prior Art Search
Inventors who seek patent protection should perform prior art searches before applying for a patent. A thorough prior art search should identify all relevant patent/non-patent literature to ensure an invention is patentable.
Prior art searches help determine novelty of an invention. In determining novelty, a prior-art document is to be read as it would have been read by a person skilled in the art on the relevant date of the document. By “relevant” date is meant the publication date in the case of a previously published document and the date of filing (or priority date, where appropriate).
In addition to determining novelty, the prior art search results can also be used to generate ideas in research and development (R&D). One can avoid duplicate research, decrease R&D investment, and develop new technical solutions for problems. They may also evaluate specific technologies and develop new products. It helps you find the legal status of patent applications, stay on top of technological developments, and monitor the research activities of competitors.
What are the types of items that are considered prior art?
Prior art is all encompassing, and can include the following:
- Another patent document
- A publication or document that mentions concepts similar to the inventive concept
- A product
- A public display of a product
- A product sale
- Public knowledge about the product
Most people think of other patents or patent publications as prior art. The patent offices have patent repositories where patent documents are classified according to their technology areas for ease of searching for relevant prior art documents. For instance, databases of organizations such as the US Patent and Trademark Office (USPTO) and the World Intellectual Property Organization (WIPO) use the use the International Patent Classification (IPC) code to segregate patent documents based on their technology area. Thus, you can find all the relevant data related to your invention, if you are acquainted with these systems.
While patent publications from the world’s patent offices are an important source for the search, a thorough and complete prior art search requires that the applicant examine numerous other data sources, including press releases, product information brochures, and technical publications.
In addition to searching for prior art that are directly relevant to your invention, you should also look for competing art. These are ideas that may not be at all like yours but do the same job. One reason is that most inventions are a solution to a problem, and most problems have more than one possible solution. You need to examine other solutions, as some may offer more advantages than yours.
Another reason for doing this is to know your competitors’ advantages. If you go-to-market with your invention, alternative solutions may be strong competition. To argue successfully that your solution is better than alternatives, you need to know what the alternatives are!
When to invest in a prior-art search
The value of an invention and the subsequent Patent determines how much effort should be spent on a prior-art search. For example, if an invention that is the basis of a company (e.g., it is the primary product or requires substantial research investments) might warrant extensive prior art searching.
Why certain prior art is disqualified in the US?
In the US, through the America Invents Act (AIA), a patent applicant may be able to sidestep certain prior art. For example, prior art can be excluded even if relevant to the invention if the inventor can prove that the prior applicant copied the invention from the inventor. The prior art exception is detailed in MPEP Section 2153 reproduced below:
2153.01 Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35 U.S.C. 102(a)(1) (Grace Period Inventor Or Inventor-Originated Disclosure Exception) [R-11.2013]
AIA 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions limit the use of an inventor’s own work as prior art, when the inventor’s own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor not more than one year before the effective filing date of the claimed invention. AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. MPEP § 2153.01(a) discusses issues pertaining to disclosures within the grace period by the inventor or a joint inventor (“grace period inventor disclosures”) and MPEP § 2153.01(b) discusses issues pertaining to disclosures within the grace period by another who obtained the subject matter directly or indirectly from the inventor or joint inventor (“grace period inventor-originated disclosures”). MPEP § 2152.01 discusses the “effective filing date” of a claimed invention.
How to determine if your idea is original
Patent searches are the first step to getting your patent. You can do a google patent search or do a USPTO search. After the patent application has been filed, the product subject to the patent can be described as patent-pending. you can find the patent application on public pair. After the patent office approves your application, you’ll be able to do a patent number look to find the patent issued. The product you are selling will be patented. Alongside the USPTO search engine, you can use other search engines, such as espacenet as described below. A patent lawyer or attorney can assist you with the procedure. In the US, patents are issued by the US trademark and patent office or by the United States patent and trademark office, which is also responsible for examining trademark applications.
Are you interested in locating similar patents? These are the steps:
1. Brainstorm terms to describe your invention according to its function, composition, or use.
Start by writing down a brief and precise description of your idea. Be sure to avoid using terms that are generic such as “device,” “process,” and “system.” Instead, think about synonyms for the terms you initially chose. Next, note important technical terms as well as keywords.
Utilize the following questions to help you determine keywords or concepts.
- What is the goal of the invention? Is it a utilitarian device or an ornamental design?
- Is invention a way to make something or carry out a function? Is it an item?
- What is the structure of the invention? What is the invention’s physical composition?
- What is the goal of the invention?
- What are the terms used in technical terminology and keywords that describe the nature of an invention? A technical dictionary can help you find the appropriate terms.
2. These terms will enable you to look up pertinent Cooperative Patent Classifications at Classification Search Tool. To determine the best classification to your invention, look through the classification’s class Schemes (class schedules). If you do not get results using the Classification Text Search, you might consider substituting your words that describe your invention using synonyms.
3. Go through 3. Check the CPC Classification Definition for confirmation of the CPC classification you found. The link to a CPC classification definition will be provided in the event that the title of the chosen classification has a blue box that includes “D” on the left. CPC classification definitions can help identify the specific classification’s scope which is why you can be sure to select the most pertinent. The definitions could also contain search tips or other suggestions that could be helpful for further research.
4. Get patent documents using the CPC classification from the Patents Full-Text and Image Database. You can review and narrow down the most relevant patent publications by focusing first on the abstract and drawings representative of.
5. This list of patent publications is the most appropriate to examine for similarity to your invention. Pay close attention to the specification and claims. Consult the applicant and patent examiner to obtain additional patents.
6. Retrieve published patent applications with the CPC classification you chose in Step 3 of the Applications Full-Text and Image Database. You can apply the same method of search as in Step 4. You can narrow your search results down to the most relevant patent applications by examining the abstract and drawings that appear on each page. Then, you must carefully review the published patent applications with particular attention paid to the claims and additional drawings.
7. Locate other US patent publications using keyword searching in PatFT or AppFT databases, classification search of non-U.S. patents per below, and searching for non-patent literature disclosures of inventions using internet search engines. For instance:
- Add keywords to your search. Keyword searches may turn up documents that are not well-categorized or have missed classifications during Step 2. For example, US patent examiners often supplement their classification searches with keyword searches. Think about the use of technical engineering terminology rather than everyday words.
- Search for foreign patents using the CPC classification. Then, re-run the search using international patent office search engines such as Espacenet, the European Patent Office’s worldwide patent publication database of over 130 million patent publications. Other national databases include:
- European Patent Office (EPO) provides esp@cenet to access a network of Europe’s patent databases with access to machine translation of European patents.
- Japan Patent Office (JPO) – with access to machine translations of Japanese patents.
- World Intellectual Property Organization (WIPO) offers PATENTSCOPE with a full-text search of published international patent applications and machine translations for some documents, as well as a list of international patent databases.
- Korean Intellectual Property Rights Information Service (KIPRIS)
- State Intellectual Property Office (SIPO) with machine translation of Chinese patents.
- Other International Intellectual Property Offices with online patent databases include Australia, Canada, Denmark, Finland, France, Germany, Great Britain, India, Israel, Netherlands, Norway, Sweden, Switzerland, and Taiwan.
- Search non-patent literature. Inventions can be made public in many non-patent publications. It is recommended that you search journals, books, websites, technical catalogs, conference proceedings, and other print and electronic publications.
To review your search, you can hire a registered patent attorney to assist. A preliminary search will help one better prepare to talk about their invention and other related inventions with a professional patent attorney. In addition, the attorney will not spend too much time or money on patenting basics.
how prior art is used During Patent Examination
Prior art is used in patent prosecution to determine if the invention claimed in a patent application is novel and non-obvious. During the patent prosecution process, a patent examiner will conduct a search for prior art to identify any information that has been made available to the public before the filing date of the patent application. This includes published patents, articles, books, and other publicly available information.
If the examiner finds prior art that is identical or similar to the invention claimed in the patent application, the application may be rejected. The applicant may then have the opportunity to amend the claims or provide arguments as to why the invention is still considered novel and non-obvious in light of the prior art.
The patent office uses the prior art to make a determination as to whether the invention is new, useful and not obvious. The prior art search is not limited to the country where the patent application is filed, but worldwide.
The use of prior art in patent prosecution can also help to ensure that patents are only granted for truly novel and non-obvious inventions, which helps to promote innovation and prevent the grant of overly broad patents.
In summary, prior art plays a critical role in patent prosecution by helping to determine if the invention claimed in a patent application is novel and non-obvious. The patent office conducts a prior art search to identify any information that has been made available to the public before the filing date of the patent application, if they find prior art that is similar or identical to the invention claimed in the application, the application may be rejected, and the applicant can then attempt to amend the claims or argue why the invention is still considered novel and non-obvious.