What is Prior Art?

by | Feb 6, 2018 | Patent Law

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What is Prior Art?

We discuss the need to do a patent search to find prior art.  What is prior art that the patent search is supposed to find?

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.

A prehistoric cave painting can be prior art. A piece of technology that is centuries old can be prior art. A previously described idea that cannot possibly work can be prior art. Anything can be prior art.

An existing product is the most obvious form of prior art. This can lead many inventors to make a common mistake: just because they cannot find a product containing their invention for sale in any shops, they assume that their invention must be novel.

The reality is very different. Many inventions never become products, yet there may be evidence of them somewhere. That evidence – whatever form it may take – will be prior art.

Prior Art under 35 U.S.C. §102(a)

A patent or literature reference by another that is published (printed publication) or laid-open before the invention thereof by the applicant for patent (generally, prior to an applicant’s U.S. filing date) is available as prior art under 35 U.S.C. §102(a).
The term “by another” includes any difference in inventive entity, even among multiple inventors. For example, if X and Y file a patent application, and if X and C disclose the invention in a literature reference that is published prior to X and Y’s U.S. filing date, than the subject literature reference is available as prior art under 35 U.S.C. §102(a).

Prior Art under 35 U.S.C. §102(b)

A patent or literature reference by anyone that is published more than one year prior to an applicant’s U.S. filing date
is available as prior art under 35 U.S.C. §102(b).
An inventor’s own publication can not be applied as prior art under 35 U.S.C. §102(a), so long as a U.S. application is filed within one year of the publication date. This is called the “grace period” and is unique to United States patent law. For example, in many countries, the inventor’s public disclosure prior to filing a patent application defeats novelty. However, if published more than one year prior to applicant’s U.S. filing date, even the inventor’s own publication can be applied as prior art under 35 U.S.C. §102(b).
The provision of §102(b) is called a “statutory bar”. That is, a §102(b) reference cannot be removed or antedated under any circumstances. When the examiner cites a §102(b) reference and assuming that the rejection is well founded, the applicant must then amend the claims to distinguish over the prior art.

Prior Art under 35 U.S.C. §102(e)

The provisions of §102(e) relate to U.S. patents, published U.S. patent applications and PCT applications published by WIPO. A U.S. patent or published U.S. patent application, by another, is available as prior art as of its effective U.S. filing date. A PCT application, by another, designating the U.S. and published by WIPO in English is available as prior art as of its PCT filing date.
The importance of a trademark search is to find prior art to make sure that an invention is able to be protected by a patent, and to make sure that there are as few roadblocks on the way to get the registration as possible.

Verna Law, P.C. focuses on patent law.  If you have a question about your invention, please contact us at anthony@vernalaw.com or 914-908-6757.

When navigating the world of patents, one of the most crucial concepts to grasp is “prior art.” In essence, prior art refers to any evidence that your invention is already known before the effective filing date of the claimed invention. This knowledge can come from various sources, including public use, printed publications, existing patents, and even trade shows. Understanding prior art is essential for both patent applicants and patent examiners, as it directly influences the patentability of a new invention.

What Constitutes Prior Art?

Prior art includes any information or materials that are publicly available before the effective filing date of a patent application. It serves as proof that the subject matter of the claimed invention is not new or is obvious. Prior art can be found in:

  • Printed Publications: These can range from magazine articles to high school textbooks and even social sciences research papers. Any printed publication of any medium will be relevant prior art.
  • Existing Patents: Both published and unpublished patent applications can serve as prior art.
  • Public Use: If an invention is used publicly or offered for sale, it can be considered prior art.
  • Trade Shows and Commercial Products: Demonstrations at trade shows or existing products in the market are also significant sources of prior art.

The Role of a Thorough Prior Art Search

A thorough prior art search is essential for determining the patentability of an invention. Conducting this search involves scrutinizing existing patents, non-patent literature, and other relevant sources to uncover any prior art that could potentially impact the new invention’s novelty.

Patent examiners at the United States Patent and Trademark Office (USPTO) rely heavily on prior art searches to assess the novelty and non-obviousness of a patent application. As a patent applicant, engaging in a comprehensive search before filing can save time and resources by identifying potential obstacles early in the process.

Conducting a Prior Art Search

There are several ways to perform a prior art search:

  • Search Engines: Utilizing tools like Google Patents can help uncover relevant patents and publications.
  • Patent Office Databases: Accessing databases provided by the USPTO and other international patent offices.
  • Trade Publications and Non-Patent Literature: Reviewing industry-specific publications and scientific journals.
  • Patent Agents and Attorneys: Seeking assistance from professionals who specialize in patent law and patent searching.

Legal Implications and Advice

Failing to conduct a thorough prior art search can lead to significant legal challenges. If prior art is discovered after a patent is granted, it can be used to challenge the patent’s validity. This underscores the importance of due diligence and reasonable diligence in the patent application process.

For those seeking legal advice, consulting with a patent attorney or agent is highly recommended. They can provide specific information on how to navigate the complexities of prior art and the patenting process.

Notable Exceptions and Grace Periods

Under certain conditions, prior disclosures by the inventor may not count as prior art. The United States patent law provides a one-year grace period for disclosures made by the inventor. This means that if the inventor publicly discloses the invention, they have one year from that date to file a patent application.

The Purpose of a Prior Art Search

The primary purpose of a prior art search is to ensure that the claimed invention is new and non-obvious. This helps in constructing strong patent claims and provides a clear understanding of the existing landscape of similar technologies.

Next Steps for Patent Applicants

Once a thorough prior art search is completed, the next steps include:

  • Filing a Utility Patent Application: This involves submitting detailed descriptions and claims of the invention to the USPTO.
  • Navigating the Patent Application Process: Working with a USPTO examiner to address any prior art that may impact the patent’s claims.
  • Protecting Trade Secrets: In some cases, inventors may choose to keep certain aspects of their invention as trade secrets rather than seeking patent protection.

Conclusion

Prior art plays a pivotal role in the patent application process. By understanding what constitutes prior art and conducting a thorough search, inventors can better navigate the complexities of patent law and improve their chances of securing patent protection for their new inventions. Whether through self-help services or legal professionals, a diligent approach to prior art searches is essential for any aspiring patent holder.

Remember, the key to successful patenting lies in being well-informed and proactive in uncovering and addressing prior art.

Verna Law, P.C. focuses on patent law.  If you have a question about your invention, please contact us at anthony@vernalaw.com or 914-908-6757.

Here are some case summaries that affect prior art:

Duncan Parking Techs., Inc. v. IPS Group, Inc. (Fed. Cir. 2019)

Case Summary:In Duncan Parking Techs., Inc. v. IPS Group, Inc., the Federal Circuit dealt with the issue of patent validity concerning parking meter technology. Duncan Parking Technologies, Inc. (Duncan) had challenged the validity of IPS Group, Inc.’s (IPS) patents, asserting that the patents were invalid due to prior art.

Background:IPS held several patents related to wireless, solar-powered parking meters, which included features like wireless communication to a central system and the use of solar power to extend the battery life. Duncan contended that the patents were invalid because the claimed inventions were anticipated by prior art.

Federal Circuit Decision:The Federal Circuit affirmed the decision of the lower court, which had found that some of the claims in IPS’s patents were invalid as they were anticipated by prior art. The court determined that the prior art disclosed all the limitations of the challenged claims, thereby rendering those claims invalid. This decision underscored the importance of a thorough prior art search and examination process to ensure the novelty of claimed inventions.

IPS Group, Inc. v. Duncan Solutions Inc. (Fed. Cir. 2019)

Case Summary:In IPS Group, Inc. v. Duncan Solutions Inc., the Federal Circuit again addressed the dispute between IPS Group, Inc. and Duncan Solutions Inc. (Duncan), focusing on different aspects of patent infringement and validity.

Background:IPS had accused Duncan of infringing on its patents related to parking meter technology. Duncan, in turn, counterclaimed that IPS’s patents were invalid due to prior art. The dispute revolved around several patents covering innovations in parking meter technology, including systems for managing parking meters wirelessly and features that optimize power usage.

Federal Circuit Decision:The Federal Circuit upheld the findings of the lower court, which had ruled in favor of Duncan on certain patents, finding them invalid due to prior art, while also determining that some other claims were not infringed by Duncan. The court’s decision highlighted the rigorous standards for proving patent infringement and the importance of demonstrating the novelty and non-obviousness of patent claims in light of existing prior art.

Both cases illustrate the complexities involved in patent litigation, especially concerning the issues of prior art and the validity of patent claims. The Federal Circuit’s decisions reinforced the necessity for patent holders to ensure their claims are novel and non-obvious in light of prior disclosures.

Case Summary: Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.

Background:Helsinn Healthcare S.A. (Helsinn) sued Teva Pharmaceuticals USA, Inc. (Teva) for patent infringement concerning Helsinn’s anti-nausea drug, Aloxi. The dispute centered around whether Helsinn’s patent was invalid under the “on-sale” bar of the America Invents Act (AIA), which prohibits patenting an invention that was on sale more than one year before the patent application was filed.

Key Issue:The key issue was whether a sale or offer for sale, made public but with the details of the invention kept confidential, counts as prior art that triggers the “on-sale” bar under the AIA.

Legal Question:Does the AIA’s on-sale bar apply when the details of the invention were not publicly disclosed in the sale?

Facts:

  • In 2001, more than one year before filing for the patent, Helsinn entered into a licensing and supply agreement with MGI Pharma, Inc. for the drug Aloxi.
  • The agreement was publicly announced, but the specific dosage formulations covered by the agreement were not disclosed to the public.
  • Helsinn later filed for a patent, which Teva argued was invalid due to the prior sale.

Court’s Reasoning:

  • The Supreme Court held that the AIA did not change the meaning of “on sale” in the pre-AIA version of the statute.
  • The Court reaffirmed that an invention is “on sale” within the meaning of §102(a)(1) of the AIA when it is the subject of a commercial offer for sale and the invention is ready for patenting.
  • The Court noted that the public disclosure of the sale, even without the disclosure of the detver ails of the invention, was sufficient to trigger the on-sale bar.

Conclusion:The Supreme Court ruled in favor of Teva, affirming that the AIA’s on-sale bar applies to sales that publicly disclose the existence of the sale, even if the details of the invention remain confidential. Therefore, Helsinn’s patent was invalid because the invention was on sale more than one year before the patent application was filed.

Significance:

This ruling clarified that the AIA did not alter the traditional interpretation of the on-sale bar, maintaining that any sale or offer for sale that places the invention in the public domain can be used as prior art to invalidate a patent, regardless of whether the details of the invention are publicly disclosed.

Implications:

  • Patent applicants must be cautious about entering into sales or commercial agreements involving their inventions before filing for a patent.
  • The decision underscores the importance of filing for a patent before engaging in any commercial activity related to the invention.

This case is significant for patent law, particularly regarding how the “on-sale” bar under the AIA is interpreted and applied in determining patent validity.

Verna Law, P.C. focuses on patent law.  If you have a question about your invention, please contact us at anthony@vernalaw.com or 914-908-6757.