Patents offer legal protection for innovations and give the inventor exclusive patent rights over the use, sale, and import of their creation for a specified period, which is usually 20 years from filing. Governments grant patents to promote innovation by providing temporary exclusivity to the inventor. They safeguard novel and useful ideas, including products, methods, and machines. Innovation, by definition, means that there is something unique in the solution being patented. Therefore, to determine the uniqueness of an invention, we need to understand the term ‘prior art’.
What is a prior art?
Prior art consists of words ‘prior’ and ‘art’. Here, ‘prior’ implies before the filing date of the invention and ‘art’ implies published literature. Therefore, prior art refers to any information that has been made available to the public in any form before the filing date of the invention. In other words, prior art is any evidence of the existence of an invention or idea being patented that is similar or identical to that invention.
The concept of prior art is important in the field of patent law because it is used to determine the patentability criteria i.e., novelty and non-obviousness of a patent. In order for a patent to be granted, the invention must be new and non-obvious to a person skilled in the technical field.
If a prior art is same as the invention being patented, it implies that the invention is not novel. If the prior art is not same as the invention being patented, but is close enough to the invention that the invention can be derived as a matter of simple experimentation or common sense from the prior art, it implies that the invention is obvious. In either case, the invention is not patentable because of the existence of the prior art.
Thus, a prior art can be used to challenge the validity of a patent by demonstrating that the invention was already known or in use before the patent application was filed.
What are examples of prior art?
There are several types of prior art that can be used to challenge a patent. These include published documents listed below. Secret documents like non-disclosure agreements (NDA) or trade secrets do not constitute prior art.
- Printed publications (Non-patent literature): This includes any written material that has been made available to the public, such as books, journals, newspapers, and magazines.
- Patents and patent applications: Any issued patent or patent application that has been made available to the public.
- Public commercial use or sale
- Oral presentations or lectures
- Internet publications
- Trade shows or exhibitions
- Public demonstrations
- Traditional knowledge (in some countries)
- Oral knowledge
What is a prior art search?
As the name suggests, prior art search is a process of searching prior art for various features of a specific invention on several public databases. Conducting a prior art search is an important step in the patent application process. It helps to ensure that the invention is new and non-obvious, and it can also help to identify any potential issues or problems with the patent application.
If the prior art search is effective and a prior art is found, the inventors can choose to course-correct their invention by modifying the features to steer the invention away from the disclosure in the prior art. This can potentially save huge costs because the prior art is not later discovered for the first time after the patent application is filed.
Where can you search for prior art?
There are several resources available for conducting a prior art search. The United States Patent and Trademark Office (USPTO) maintains a free database of issued patents and published patent applications. The European Patent Office (EPO) also has a database (Espacenet) of published patent applications and granted patents. Many other free resources such as Google patents, Google scholar, Google web search, Free Patents Online, IEEE Explore and so on also exist.
There are also several private companies that offer professional prior art search services for a certain cost.
However, it’s worth noting that prior art searches can be time-consuming and expensive, and they may not always be able to identify all relevant prior art. In addition, the interpretation of prior art can be subjective, and it may be open to different interpretations by different people. However, they may save huge prosecution costs in the longer term. Whether an inventor chooses to avail a free or a paid service, a prior art search is highly recommended for an effective outcome from the patent filing.
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