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.
Prior art must be a reference of some type (i.e., a patent or a printed publication) or some type of knowledge or event (i.e., public knowledge, public use or a sale of a product) that demonstrates that the invention in question is not new.
Prior art can be in the form of trade journals, advertising, a college thesis or existing patents.
Prior art that invalidates a patent must have been created before the patent was filed. For example, a textbook describing an invention counts as prior art. A textbook with a revision including a description of an invention after the date of the patent application does not count.
It is not important what language the prior art is written in or how many people saw the publication. The fact that the information was publically accessible is all that matters. Hence a small circulation Turkish newsletter has the same validity as a broadsheet British newspaper.
What isn’t prior art?
Prior art must have enabling disclosure. This means that the prior art must enable someone with average skills to understand how something works and how to construct it. For example, if a science fiction book or show contains a teleportation device this does not count as prior art if someone invents one in years to come. Unless the device or technology is explained to the threshold of enabling disclosure, it cannot be considered prior art.
Putting a work on display to the public only counts as prior art for the features the public can observe. Internet sites or pages are edited and changed frequently and therefore rarely count as prior art although there can be some exceptions.
Oral disclosures count as prior art if there is proof, such as a transcript, of the conversation or presentation taking place. In the USA oral disclosures only count as prior art if they have been made in the USA.
If an inventor has a non-disclosure agreement (NDA) with a third party, then this disclosure does not count as prior art. If the inventor can prove that the exchange was confidential, for example talking to a patent attorney, then a non-disclosure agreement is not necessary.
What is a prior art search?
A search for prior art involves trying to find knowledge of your invention in per-existing patents, publications, trade journal articles or textbooks. The search will also turn up competing art, inventions which solve the same problem or do the same job as your own. This is useful when considering the competitive market for your invention.
Prior art can be used defensively to protect an invention you patent at a later date. It can also be used to invalidate a patent someone else has been granted.
IP.com’s Prior Art Database is the world’s largest online prior art disclosure service. This service provides search access and journals to patent offices all around the world. It is the best way to carry out your prior art search.
Why do you need to check for prior art?
The process of acquiring and maintaining a patent is expensive. The process of bringing a technology or product to the market is even more costly. Checking for prior art allows you to be sure that your invention is new and therefore eligible for the patent process.
Even if your invention is not entirely new, it may not be the end of your project. Thomas Edison did not take out the original patent for a light bulb. He did patent an improved version that was sufficiently novel. This is a vital part of the early decision-making process to take an invention through the patenting process.
A prior art search needs to be made before Freedom to Operate (FTO) is established.
Why should you create prior art?
Creating prior art ahead of or instead of any desire to acquire a patent is an intellectual property strategy. This approach is referred to as a defensive publication or a defensive disclosure. It allows you to create a scenario where none can patent your idea and at the same time you can delay or totally skip the expense of the patenting process yourself. Creating prior art is a recognized and legitimate intellectual property strategy, but it must be done accurately to serve the intended function.
This is a good idea if you lack the resources to fund a patenting process, or you do not feel it would be profitable to do so. It is vital when taking this approach that the prior art does what you want it to do and covers the features and ideas you need it to. This is where IP.com can help you identify what needs to be covered and create the appropriate prior art. As mentioned above, to be classified as prior art, there must be enabling disclosure.
IP.com has a range of professional services that will help you carry out your search and offer advice on what steps to take next. We can assist you in preparing your defensive disclosure to suit your business goals and needs.
What is Freedom to Operate?
Freedom to operate defines how your patent can be implemented. Can you achieve your goals of commercializing, manufacturing and marketing your product without infringing anyone else’s intellectual property rights? For example, if the manufacturing process for your invention uses a patented technology you will be infringing the patent if you act without permission.
Determining Freedom to Operate is a vital step in the process of taking your idea from theory to reality.
Inevitably some constraints will exist in the process of commercializing a product. It is essential that these constraints be known ahead of time to make adequate business decisions around them. For example, some re-designing of your product could make a big difference to your FTO. This re-design process can only be done with relevant information and insight. Another option is to purchase the patents held by a third party to clear the way for the desired course of action. A mistake made during this process, or even worse, completely skipping it, could result in significant financial damages. It could even be the end of your project.
FTO can never be guaranteed with absolute certainty, especially in industries that are already “thick” with patent activity. The solution is to utilize professional knowledge to minimize the risk in launching a new product and to understand precisely what is needed.
Potential Problems and Solutions.
One potential solution to infringement is acquiring permission from the patent holder to carry out your process or coming to a cross-license agreement. Another avenue is to dive into the complexities of the patents held. For example, some patents define monopolies and rights for only certain areas of the world. Patents must be applied for separately in different countries, and it is unusual to patent extensively across the globe. By examining the rights held by others, you can establish if there is some way of progressing without clashing with anyone else.
Non-Practicing Entities Have Created a Riskier Environment.
Nonpracticing entities (NPEs) are companies who do not actively sell goods or services. They only concern themselves with patent litigation. This demonstrates the enormous financial risks and opportunities surrounding intellectual property laws and their enforcement. It is vitally important to be sure that your FTO is established and that you understand what is and is not covered. Without this process, you could end up with someone else legally exploiting your hard work, or you might accidentally infringe another patent. Both of these scenarios could be extremely costly.
The existence and practice of NPEs is proof-positive that the world of patents and specifically intellectual property is becoming more complicated to navigate.
IP.com can help structure and support your business decision making. Our Freedom to Operate Search service contributes to pinpoint any issues with patents that will stand in the way of the commercialization of your products and technologies. This will allow you to minimize potential risk and maximize potential profit. Shouldn’t this section go under the FTO section above???
What is a Patent?
A patent refers to rights granted by a government to an inventor for a period of time. In the United States, this period is usually twenty years. Patents are a form of intellectual property that an inventor applies for and uses as part of an overall business strategy.
The purpose of a patent is to allow the inventor a particular monopoly over their work as a reward for making their invention public once the patent is granted. A patent will only be granted if an invention is useful, non-obvious and novel. Your invention should be something that’s not obvious and has not already been thought of by someone else. To be useful, the invention must solve a problem.
Before applying for a patent, you need to conduct a search for prior art. Prior art is any evidence that your invention has already been thought of or patented. Prior art can include searching for existing patents. If your idea has already been patented, you may be able to arrange to license the existing patent. You can also use this information to redesign your product and save yourself the time and money of submitting a patent application that will not be granted.
Patents must be applied for separately in each country where rights and protections are desired.
After a patent has been applied for a phase called “patent pending” is entered into. This timeis usually utilized to make deals with other companies or manufacturers based on the rights you hope to acquire.
If a patent is granted, certain exclusive rights are given to the inventor. These rights will vary depending on the country in which the patent has been applied for and the relevant national and international laws. A right granted could be the right to exclude others from manufacturing or importing the invention during the term of the patent.
At every stage during the process of researching, applying for and acting on a patent you need the support of professional experts. IP.com’s unique InnovationQ discovery and analytic platform will help you to optimize the monetization of your intellectual property. The InnovationQ discovery and analytic platform allows users to quickly and easily assess the strengths and weaknesses of their patents, evaluate the competition and make the best possible business decisions.