Patent Registration: The Importance of Prior Art

Patent

Prior art is a legal term that significantly affects the success of a patent application, making it one of the most crucial concepts to understand if you’re looking to invest in patents.

It determines whether you can receive intellectual property rights over an innovation. Failing to acquire intellectual property (IP) over a service will allow the competition to enter the market or implement it into their offering. This in turn may lower your invention’s value.

 

Defining Prior Art

Prior art acts as evidence that an invention or discovery is not new or non-obvious. These two characteristics play a vital role in making an innovation patentable. Basically, prior art means that something strongly resembling your innovation was conceived or displayed at one point in time.

Patents don’t apply for inventions that already exist or for things that are obvious. Patents can be invalidated by a court if it learns that the innovation wasn’t new. The patent system exists to incentivize inventors and creators to come up with new products, services and ideas.

One of the steps in obtaining a patent is proving that your invention doesn’t encroach on some prior art.

However, prior art can exist without being physically available. For example, prior art can be:

  • Printed or electronic versions of publications
  • A demonstration at a conference
  • A textbook that was publicly available
  • Blog posts and videos

There is often a good deal of confusion surrounding what constituents prior art.

Virtually anything can be prior art. It isn’t only limited to issued patents or commercial products. Notice that all of the aforementioned listed examples are accessible by the public. Things like language, location or audience size don’t undermine the validity of prior art. That means that prior art from anywhere in the world is applicable.

The non-obvious characteristic of a prior art is an important requirement for getting hold of a patent. This means that a Patent Office will have to establish whether the innovation would have been obvious to someone working in the industry. This hypothetical person is assumed to have broad knowledge of the field, but without the advanced level of expertise of the inventor.

It’s important to note that you aren’t necessarily allowed to file a patent for an innovation because it hasn’t been implemented in a product or service yet. There are cases when something that isn’t commercially available hasn’t been patented. For example, the repercussions of the innovation exceed the benefits.

 

Searching for Prior Art

Some businesses discourage their engineers from performing prior art searches. They fear that the engineers will refuse to file for a patent if they discover that a similar invention already exists.

The other reason is that they worry if the company comes across a similar invention, then they run the risk of being liable for willful infringement in case of a lawsuit. 

However, these fears are unjustified and there are numerous benefits to performing a prior art search. For one, you won’t file an application for claims that would be rejected, saving you time and money. 

Also, searching for prior art will give you a more thorough understanding of your invention, and help you appreciate its viability. 

A quick and important side note: you should also search for competing art, which are innovations that aren’t similar to yours but offer the same solution. By looking at competing art, you’ll see how others tackled the same problem differently. You’ll be able to discover how your solution stacks against others, and improve it if necessary.

 

Do It Yourself Searches

Use public resources to find patents. When searching for prior art, use keywords that accurately describe your invention. There are several databases to choose from to search for prior art by yourself.

Search for existing patents by keywords with Google’s Patent Search. If you discover an invention that could potentially be considered prior art, then you should try to alter your invention to get over this hurdle. 

Another great resource for prior art searching is the European Patent Office’s free database Espacenet. It contains 90 million documents from patent offices from many different countries.

The United States Patent and Trademark Office has a search engine known as Public Patent Application Information Retrieval (referred to as PAIR) that can find both filed and existing patents.

Finally, the United Nations established the World Intellectual Property Organization (WIPO), which is an agency that grants access to the International Property system. You can use its PATENTSCOPE database to search for patent documents of various participating national and regional patent offices. The database contains 78 million patent documents, making it an indispensible source of prior art.

Of course, this cannot replace the services of a professional patent attorney. An attorney with detailed knowledge in your field can be helpful if your innovation is technical and complicated.

 

Expert Knowledge

An experienced attorney can easily spot relevant prior art, and will help you draft a patent application that separates your invention from others. An attorney can help you to better describe the advantages of your innovation over pertinent prior art. As a result, the patent office will have an easier time accepting that your innovation is non-obvious. 

Searching for prior art can be burdensome. Therefore, the resources you invest should reflect the value of innovation and the patent application. For example, if you file a patent application as a marketing strategy, and you don’t have any plans to follow through to completion, then you don’t need to engage in a lot of prior art searching.

However, if an innovation is an integral part of your company’s business model, then you should be prepared for a thorough prior art search.

There are 4 types of prior art searches:

  • Novelty searches assist inventors in learning whether the invention is new before filing a patent application.

  • Validity searches are carried out after a patent is issued in order to identify prior art a patent examiner neglected to find. Validity searches are typically used by those who want to contest existing patents.

  • Clearance searches are carried out to determine whether an invention infringes on pending/existing patents. 

  • Landscape searches are broad and offer an overview of a technological industry or field. They are used to learn about technological trends, competition, filing system and help you get a better field for the space.

Does this mean that prior art inevitably disqualifies an invention? Not necessarily. If you can differentiate your invention from a similar patent, then you will be able to receive a patent. 

 

Cases When Prior Art Doesn’t Count

There are instances when prior art cannot be used to dismiss a patent application. For example, if something was invented in secret and was never revealed until the inventor discarded it, then it may not count as prior art.

Trade secrets are typically not considered prior art, as long as people with secret information agreed to a non-disclosure agreement. Anything that isn’t publically available, like unpublished work cannot be considered prior art.


Conclusion

If a patent for your invention isn’t granted, it’s not easy for a non-expert to understand the strength of the examiner’s arguments. This is why you should have an attorney who is a domain expert look at your application and analyze the validity of the examiner’s argument. An attorney specializing in IP can review your application and can advise what steps you should take to secure a patent for your invention.