Identify Prior Art to Support Patent Prosecution


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.