Prior Art Primer

As you may already know, before a patent can be issued, a formal patent
application must be filed with the USPTO (United States Patent and Trademark

A patent application contains both a description of the invention written in a way to enable others to make and use the invention and one or more patent claims identifying what aspects of the invention will be owned exclusively by the patent holder if the patent is granted.

Although the written description (called the patent specification) is very helpful in describing what an invention does, the patent claims are the most important part of any patent. This is because a patent will give an owner the right to prohibit others from making, using or selling only what is covered by the patent’s claims.

Patent and Patentability

Once granted by the USPTO, the patent gives the patent holder the right to prohibit others from making, using, selling, offering for sale, importing, or exporting their invention for a limited period of time in exchange for public disclosure of that invention.

In order for an invention to be patentable, it must generally meet the following 4 conditions:

  1. Patentable Subject Matter- the invention must fall within a statutory class of patent eligible subject matter (process, machine, manufacture or composition of matter) and not be subject to a judicially recognized exception (e.g. law of nature, natural phenomena, abstract idea).
  2. Novelty – the invention, as a whole, must be new (i.e., not found in the “prior art”).
  3. Non-obviousness – from the perspective of one skilled in the art, the invention should not be obvious in view of what is already known in the prior art.
  4. Utility – the invention must have a credible use or utility.

So What is Prior Art?

Before a patent application can become an issued patent, it must be examined and compared to publicly known inventions, discoveries, writings, or knowledge that came before it.

In other words, it must be compared to “prior art.”

According to the United States Patent & Trademark Office (USPTO), “Prior art is any evidence that your invention is already known.” More specifically, prior art is any information that has been disclosed to the public in any form prior to a given date that might be relevant to the originality of an invention or its patentability.

Prior art does not need to exist physically or be commercially available. It is enough that someone, somewhere, at some time previously described, showed, demonstrated, or made something that specified the use of an invention that is very similar to yours.

Examples of Prior Art

An existing product is the most obvious form of prior art.

For example, the telephone system may be considered to be prior art to the pager, and both the telephone system and the pager may be considered to be prior art to the mobile phone. In another example, a magnifying glass may be considered to be prior art to a single eyepiece or monocle, and both a magnifying glass and a monocle may be considered to be prior art to a pair of spectacles or eyeglasses.

In each of the above examples, the purpose of the products and the problems they solve are largely the same. On the other hand, advancements in technology, enhanced features, and other novel benefits made each invention patentable by claiming aspects of the invention that were not obvious in view of the prior art.

One should never assume, however, that since they cannot find, or have never seen a product containing their invention for sale anywhere, that it must be novel. The reality is very different. Many inventions never become products, but there may still be evidence of them somewhere and that evidence, whatever form it takes, will be prior art.

A prehistoric cave painting, a piece of centuries-old technology, a previously disclosed idea that cannot possibly work, a science fiction story, an ancient Roman fountain, and even a nursery rhyme can be considered prior art if it discloses technology similar to your invention.

The Role Of Prior Art in The Patenting Process

The patenting process largely consists of distinguishing the claims made in a patent application from that prior art. Prior art is, therefore, important because it forms the basis for the patent examiner’s decision to accept or reject the patent application’s claims.

A prior art search is automatically performed by the patent examiner at the patent office in order to determine if the claims made in a patent application should be accepted or rejected. However, a “preexamination” prior art search conducted before the filing of a patent application can be helpful in properly characterizing the invention in the application.

Sources of Prior Art

One of the most important places to search for prior art is in patent databases (U.S. and foreign), which typically includes both granted patents and published patent applications. It is estimated that 70% of the information disclosed in patents is never published anywhere else.

But, not all inventions or ideas have been patented, so when doing a patent search you may want to also explore a variety of different sources other than patent databases. These include, but are not be limited to:

  • Journals
  • Scholarly Thesis
  • Books
  • Magazines
  • Academic works
  • Product literature
  • Traditional knowledge
  • Public disclosure of ideas at seminars, conferences, workshops, demonstrations, etc.
  • Physical products
  • Evidence of sale or public use
  • The Internet

How Prior Art Affects Novelty

By and large, the most important aspects of patentability are the concepts of novelty and non-obviousness in view of the prior art. For a claimed invention to be novel, it must not be disclosed in, in its entirety, in a single prior art reference. While novelty is generally a basic requirement for patentability, it should be noted that the standard for novelty, and what is considered to be prior art, varies from country to country.

Most countries follow absolute novelty standards whereby a published disclosure anywhere in the world represents prior art to a patent claim. In such countries, an inventor’s own actions prior to the priority date of a patent application can constitute prior art. For example, if an inventor discusses or discloses the invention at a scientific conference or seminar, this may be considered as prior art against his or her own, subsequently filed, patent application.

Contact an Experienced Patent Law Attorney

United States Patent Law is complicated and most often requires a detailed analysis of the facts and the law. An experienced patent attorney will also understand what needs to go into your patent application and can help you describe your idea or invention in a way that gives it the best chance of being accepted by the patent office.

To learn more about prior art as it relates to your idea or invention, contact a experienced patent attorney at TIPS Group.