Gavin Howe
Prior art is a concept in patent law that determines the patentability of an invention. It is the term given to information that has been publicly disclosed before the filing date of a patent. This includes patents, patent applications, academic papers, publications, trade journals, magazines, online resources, brochures, sales materials, and physical specimens. Prior art is evaluated by patent offices during the patent granting process to determine whether an invention meets the novelty, inventive step, and non-obviousness criteria for patentability. Patent searches are conducted to identify relevant prior art, and they can be done by patent offices, patent applicants, or search firms. The cost of searching for prior art can vary depending on the scope and depth of the search, with worldwide searches being more expensive. Understanding what constitutes prior art is crucial for navigating the patent application process and avoiding rejections.
| Characteristics | Values |
|---|---|
| Definition | Prior art is any evidence that an invention was already publicly known or available, in whole or in part, before the effective filing date of a patent application. |
| Examples | Public knowledge or use of the invention, a previously filed patent application, patents and published patent applications from any country, academic papers and publications, trade and specialty journals and magazines, online resources, brochures, sales material, physical specimens, etc. |
| Notable differences | Different national, regional, and international patent systems define prior art differently. For example, under the European Patent Convention, patent offices treat their own patents and published patent applications as prior art with respect to novelty but not inventive step. |
| Search procedure | Patent offices or patent applicants may conduct prior art searches. Patent offices may also rely on the search results of other patent offices or cooperate with them. The public can also submit prior art for consideration. |
| Evaluation | Patent offices evaluate prior art as part of the patent granting process in a "substantive examination" to determine whether an invention meets the novelty, inventive step, or non-obviousness criteria for patentability. |
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Public availability
The concept of prior art is important in patent law as it helps determine the patentability of an invention. It is evaluated by patent offices during the patent-granting process to assess whether an invention meets the novelty, inventive step, and non-obviousness criteria for patentability.
It is important to note that public availability is not limited by factors such as target audience, language, number of copies, or geographic location. For example, a high school textbook published only in Kazakhstan can still be considered prior art.
In the United States, prior art is defined by federal statute 35 U.S.C. 102, as amended by the America Invents Act (AIA). This statute abolished the Hilmer doctrine, which previously only considered US patents and patent application publications as prior art, disregarding any foreign priority claims.
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Patent applications
Prior art is evaluated by patent offices during the patent granting process in a "substantive examination" to determine if an invention meets the novelty, inventive step, and non-obviousness criteria for patentability. Patent offices and applicants conduct prior art searches to identify relevant prior art, which may also be submitted by the public for consideration. Relevant prior art is then cited by applicants in their patent applications.
Unpublished patent applications can also be considered prior art under certain circumstances, such as when filed before the effective filing date of the patent application in question. Prior art must be available to the public and recorded in a fixed form, although traditional knowledge like traditional medicine may be considered prior art even without a formal record.
In the United States, inventors and their patent agents or attorneys are required to submit any references that may be material to the patentability of their claims. If they fail to properly disclose material references with deceptive intent, the patent can be found unenforceable for inequitable conduct. The Leahy-Smith America Invents Act (AIA) in U.S. patent law has abolished the Hilmer doctrine, making U.S. patents and patent application publications that name another inventor prior art as of their effective filing date.
Conducting a comprehensive worldwide search for prior art can be costly, but it is important to balance cost and efficacy in searching for prior art to ensure the patentability of an invention.
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Novelty
The statutory provisions under 35 U.S.C. § 102 provide a comprehensive framework to assess the novelty of a claimed invention, ensuring that patent claims are genuinely new and not anticipated by prior art references. A single prior art reference must disclose all the elements of the claimed invention to anticipate the patent claim. This means that the prior art must explicitly or inherently disclose every aspect of the claimed invention.
The prior art reference must be enabling to one of ordinary skill in the art to be a proper prior art reference. This means that the reference must provide sufficient information for a person of ordinary skill in the art to practice the claimed invention without undue experimentation. The prior art reference must include a level of detail that allows a skilled person to understand and practice the claimed invention. This includes descriptions of the invention's components, methods, and any necessary conditions or parameters.
Public disclosures, such as presentations at trade shows, conferences, and other public events, can be deemed prior art if they disclose an invention to the public before the filing date of a patent application. Any public presentation, lecture, or event revealing the invention can impact its patentability. These public disclosures can significantly affect the assessment of the originality of an invention claimed in a patent application.
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Non-obviousness
In US patent law, non-obviousness is a requirement that an invention must meet to qualify for patentability. It is codified as part of the Patent Act of 1952 as 35 U.S.C. §103. This section requires a comparison between the subject matter to be patented and prior art. Prior art is any evidence that an invention was already publicly known or available before the effective filing date of a patent application.
The non-obviousness requirement aims to strike a balance between encouraging innovation and minimising the social cost of granting temporary monopolies. It seeks to prevent patents from being granted for inventions that result from "normal product design and development". Instead, it incentivises fundamental research and discourages incremental improvements.
An invention is not obvious if a "person having ordinary skill in the art" (PHOSITA) would not know how to solve the problem the invention addresses using the same mechanism. However, the PHOSITA standard has proven ambiguous in practice. The US Supreme Court has provided two additional approaches to guide the analysis of non-obviousness: Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966), which outlines what is "non-obvious", and KSR v. Teleflex (2006), which defines what is "obvious".
The non-obviousness requirement has faced criticism, particularly in the pharmaceutical industry, which heavily relies on patent protection. Some argue that it creates ambiguity in the patent system and may impede the progress of science by creating too much monopoly. An alternative approach proposed is "substantial novelty", which could reduce the risk associated with the uncertainty of non-obviousness analysis outcomes.
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Patent searches
The scope of prior art is broad and can include both published and unpublished patent applications, as well as information disclosed to the public in written, oral, or demonstrative forms. It is important to note that prior art is not limited to existing products or issued patents. Traditional knowledge, such as traditional medicine, may also be considered prior art in certain cases. However, information covered by non-disclosure agreements is generally not considered prior art.
Conducting comprehensive patent searches can be costly, especially when considering the vast amount of data available worldwide. A search of worldwide online databases and internet searches can often provide a good balance between cost and efficacy. In certain situations, such as invalidating a patent or accusations of infringement, more extensive searches may be warranted to limit or invalidate a patent.
Overall, patent searches play a crucial role in the patent application process by helping to identify prior art and assess the novelty and non-obviousness of an invention. By understanding the scope of prior art and conducting effective patent searches, applicants can increase their chances of obtaining a successful patent grant.
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Frequently asked questions
Prior art is a concept in patent law that determines the patentability of an invention, specifically whether it meets the novelty, inventive step, or non-obviousness criteria for patentability.
Prior art includes any information that has been made publicly available or disclosed before the effective filing date of a patent application. This can include patents, patent applications, academic papers, publications, trade journals, magazines, online resources, brochures, sales materials, physical specimens, and traditional knowledge.
"Publicly available" information in the context of prior art refers to any information that is accessible to the public, regardless of the medium, language, number of copies, or geographic location. For example, a high school textbook published only in Kazakhstan can still be considered prior art.
Prior art is one of the most common reasons patent applications are rejected. Patent offices evaluate prior art as part of the patent granting process in a "`substantive examination`" to determine the novelty and inventive step of an invention.
Searching for prior art can be a costly and time-consuming process, as it involves searching worldwide patents, libraries, and universities. However, a good balance between cost and efficacy can be achieved by searching online databases such as the USPTO and conducting Internet searches.
