When to Talk About Prior Art in a Patent Application
I of the nearly common reasons the USPTO gives for rejecting claims in patent applications is prior art. Prior fine art tin be used to show that your invention is not "new" or "non-obvious" — and these are two of the almost important requirements that determine whether your invention is patentable.
That'due south why it'southward important to understand what counts as relevant prior art, and how that can affect your patent awarding.
WHAT'S THE DEFINITION OF PRIOR Fine art?
Technically speaking, what is considered prior fine art under U.South. police is defined by federal statute 35 UsC. 102, which was most recently amended by the America Invents Deed (AIA) — changes to the definition of prior art took effect in March 2013.
In simpler terms:Prior fine art is whatsoever evidence that your invention was already publicly known or available, in whole or in role, before the effective filing date of your patent application.
Notwithstanding, that's yet a fairly broad concept. To better pin downward what prior art is (and isn't!), permit'southward take a deep dive into several specific examples.
WHAT COUNTS Equally PRIOR Fine art?
Many people make the mistake of assuming that prior fine art is limited to either existing products or issued patents. In other words, they believe (wrongly) that they're entitled to a patent for an invention simply because that invention hasn't been patented or implemented in a product nevertheless.
But the range of data that counts every bit prior fine art is much broader than issued patents and commercial products. Generally speaking, prior art arises when someone has either fabricated an idea bachelor to the public, or filed a patent application that was somewhen published or issued as a patent.
To list some common examples, prior art can include the following:
- A product that was bachelor for sale
- Commercial apply of the invention
- Articles, publications, or journals (printed or electronic)
- Presentation at a public event (a trade show, conference, etc.)
- Public knowledge or use of the invention (eastward.g. sit-in)
- A previously-filed patent application (assuming the previous application eventually becomes a published application or an issued patent)
What examples 1-five accept in mutual: They werepublicly available orpublicly disclosed. Information technology doesn't affair whether the information is broadly accessible on the internet — factors similar target audience, linguistic communication, number of copies fabricated, and geographic location are irrelevant for publications. To use an unlikely instance, a high schoolhouse textbook published only in Kazakhstan could still count as prior art.
Additionally, the information must accept been publicly disclosed or publicly bachelor earlier the effective filing date of your patent application. If your effective filing date is Sept. ane, 2017, then a magazine article published on Aug. 31, 2017, counts every bit prior fine art — as does an expired patent from 1950. However, provided you filed on Sept. 1, a demonstration of your product in October 2017 won't qualify as prior fine art.
Example 6 higher up is slightly different from the other examples though, considering a previously-filed patent application might not exist publicly available or publicly disclosed at the time y'all file your patent application. Patent applications typically remain hush-hush for months or even years before they go public (as a published application or an issued patent).
Merely a previously-filed patent application can qualify as prior fine art fifty-fifty if information technology becomes public simply later your application is filed. So for instance, if your effective filing date is Sept. 1, 2017, another patent awarding that was filed on Aug. 31, 2017 counts every bit prior art — even if it's not published for several years.
WHAT DOESN'T COUNT AS PRIOR Fine art?
Information that becomes publicly disclosed or publicly available only after your application'southward filing engagement generally doesn't qualify as prior art. Similarly, patent applications filed later yours generally don't qualify as prior art.
Here are iv other notable exceptions to the examples provided above.
i. PUBLICATIONS THAT DON'T PROVIDE ENABLING DETAIL
For a publication to be used to reject your claims for lacking novelty, it must disembalm the invention with sufficient item — that is, it must offer an "enabling disclosure." Put another way, if someone with ordinary skill in the relevant field of technology cannot effigy out how to make and use the invention from the prior disclosure, then it can't be used equally the basis for a Section 102 rejection.
Allow's say you effigy out how to build Fe Man's accommodate and desire to patent information technology. The comic books and movies themselves can't exist used to show that your claims lack novelty, because although they explain what the adjust does, they don't provide enough information to enable the average skilled person to build the conform.
Continue in listen though that non-enabling prior artcanbe used to show that your invention is obvious.
ii. Abased, SECRET PATENT APPLICATIONS
Under sure circumstances, abased patent applications may remain confidential, disqualifying them equally prior fine art. For one, conditional patent applications that aren't converted to non-provisional applications are never published.
Past default, non-conditional applications are published xviii months from filing. However, an application will non be published if the applicant abandons it more than 4 weeks before it's due to be published.
Alternatively, if the awarding was filed but in the United States, the applicant can request non-publication — in which case the application will not be published unless and until a patent is granted.
iii. Trade SECRETS
Every bit trade secrets are confidential by nature, they cannot be used as bear witness of prior art. And so another company's trade secret invention typically couldn't exist used every bit prior art confronting your patent application, fifty-fifty if the other company developed their trade secret before you independently developed the same invention.
4. CONFIDENTIAL DISCLOSURES
Fifty-fifty though it'southward non advisable, in reality technology companies oftentimes need to disembalm their work to 3rd parties before they file a patent application — reasons to do this include gauging market involvement, pursuing funding opportunities, and developing collaborations with other groups.
When data is shared with third parties under an obligation of confidentiality, the disclosure doesn't count every bit prior art confronting your patent awarding. The best style to ensure that a disclosure will exist considered confidential to take all parties sign a not-disclosure agreement (NDA).
WHAT HAPPENS IF I DISCOVER PRIOR ART?
There'due south ever going to be prior fine art for any invention. In the words attributed to a famous federal estimate, "Just God works from nothing. Homo must piece of work with old elements." Patentability doesn't hinge on the being of prior art.Instead, whether your invention is patentable depends on how different your invention is from the prior art.
There are ii criteria for patentability over prior art. Kickoff, the invention must benew (or "novel" in the words of the statute) — which more often than not means information technology can't be identical to whatever unmarried product or reference. Quite simply, this prevents you from patenting ideas that already exist in the public sphere or in previously-filed patent applications.
Only at the next level, your invention needs to beinventive(or "non-obvious" in the words of the statute) — that is, more than than a trivial variation of prior art. That ways an invention typically can't be patented if a person of ordinary skill in the relevant field of engineering science could derive the invention from the prior art past making obvious changes or substitutions.
It'southward also important to inform the patent office if you know of whatever prior art that'southward cloth to the patentability of the invention claimed in your patent awarding. Specifically, all inventors (and anyone substantively involved with a patent application) have a duty of disclosure, candor, and skilful faith in dealing with the patent part. Complying with this obligation is frequently like shooting fish in a barrel, as the patent office provides a specific procedure for telling them about any relevant prior art.
HOW CAN I Avoid UNEXPECTED PRIOR Fine art?
In many cases, determining whether something qualifies every bit prior art and whether your invention is patentable over prior art can require relatively technical assay. If yous're looking to move frontwards with a patent awarding, consider engaging a patent chaser who'southward familiar with your industry.A skilled chaser will exist able to tell yous the options for dealing with known prior art for your specific circumstance.
Only at that place's always a possibility that yous'll encounter unexpected prior fine art — or fifty-fifty accidentally create prior art against yourself! Our FREE eBook, "Prior Art and the Patent Process," discusses smart strategies yous can employ to minimize those risks. Download information technology at present!
MINIMIZE THE Run a risk THAT You'LL Meet UNEXPECTED PRIOR ART. HERE'S WHAT SMART TECH COMPANIES Need TO KNOW.
But what should y'all do if yous discover prior art confronting your invention? Download our FREE eBook to find out. Learn the following:
- How does the industry define prior art?
- How can you do an effective prior art search — and can yous do it yourself?
- How will discovering prior art impact the claims in your patent application?
- What steps tin you accept to avoid unexpected prior fine art?
- How tin can you avert accidentally creating prior art against your own patents and applications?
Walk away equipped with smart strategies to navigate common prior art obstacles during the patent process.
Fill out the short grade on this folio to download this eBook today!
Michael M. Henry, Ph.D.
Michael 1000. Henry, Ph.D., is a chief and the firm's founding fellow member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.
Source: https://henry.law/blog/what-is-prior-art/
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