Identify Prior Art to Support Patent Prosecution

Prior art plays a central role in intellectual property rights. A good understanding of what prior art is and the different ways it can be used is essential before making intellectual property business decisions.

It is evidence that your invention has already been publicly disclosed previously to the date when you filed your patent application.

To make a public disclosure of an invention, you must describe what the invention is and how to use it. The disclosure should be such that a person skilled in the art should be able to make and use the invention. For example, if an invention is a new kind of bicycle gear attachment, it should be clear for someone with a reasonable amount of skill regarding bikes and gears to understand.

If you want to patent an invention, you should first undertake due diligence to determine if there is prior art in existence, that way you can avoid getting too far down the road with the patenting application only to find there is prior art.

If prior art does exist, then you may be able to adjust the invention and still have something patentable. Inventions are solutions to a problem, but ideas themselves cannot be patented. If someone invents a cup holder, you can also invent something that holds cups. You should be able to come up with something that does not infringe the original inventor’s rights but provides a solution to the same problem.

A prior art search involves making an examination of patents and documents relating to them, non-patent literature, and anything related to that. The more expansive and exhaustive this search is, the most useful it will be. It is important to utilize professional skills and up to date technology when performing a prior art search. has gone beyond traditional keyword searching to being able to assess the relevance of documents based on phrases, concepts and overall structure to the mission behind the search.

It is important to look for prior art when you wish to investigate the patentability of your proposed invention. This kind of search can also come into play if you own a patent and someone tries to invalidate it based upon what they claim is prior art.

You may want to utilize the strategy of defensive publishing. This means to release prior art for the sole purpose of preventing anyone else from being able to acquire a patent on the invention. This strategy does not give you the protection of a patent which is the right to prevent others from making, selling or importing your invention into the country for twenty years from the date of filling.

There may be circumstances where a patent is not the most useful solution. This could be if you feel your technology does not have tremendous commercial potential. It may make sense to keep using it, to anticipate that others would probably have come up with it eventually, and ultimately to make sure no one else patents the idea and prevents you from using it.