Prior art

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Patentability
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Prior art (also known as or state of the art, which also has other meanings), in most systems of patent law,[1] constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality. If an invention has been described in prior art, a patent on that invention is not valid.

Information kept secret, for instance as a trade secret, is not usually prior art provided that employees and others with access to the information are under a non-disclosure obligation. In the absence of such an obligation, the information will typically be regarded as prior art. Generally, this means that a patent may be granted on an invention despite the fact that someone else knew of the invention. A person who used an invention in secret may in some jurisdictions be able to claim "prior user rights" and thereby gain the right to continue using the invention. As a special exception, earlier-filed and unpublished patent applications do qualify as prior art as of their filing date in certain circumstances.

In most patent systems, in order to anticipate a claim, prior art is expected to provide a description sufficient to inform the average worker in the field (or the person skilled in the art) of some subject matter falling within the scope of the claim. Prior art must be available in some way to the public, and many countries require the information to be recorded in a fixed form somehow. Again, in most patent systems, prior art does not include unpublished work or mere conversations (though according to the European Patent Convention, oral disclosures also form prior art — see Article 54(2) EPC). It is disputed whether traditional knowledge (e.g. of medical properties of a certain plant) constitutes prior art.

Patents disclose to society how an invention is practiced, in return for the right (during a limited term) to exclude others from manufacturing, selling, offering for sale or using the patented invention without the patentee's permission. Patent offices deal with prior art searches in the context of the patent granting procedure. To assess the validity of a patent application, patent offices explore the prior art that was disclosed before the invention occurred (in the United States) or before the filing date (in the rest of the world).

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[edit] First-to-invent versus first-to-file systems

Patent law
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Main article: First to file and first to invent

The United States uses a first-to-invent system. Invention is generally defined to comprise two steps: conception of the invention and reduction to practice of the invention. When an inventor conceives of an invention and diligently reduces the invention to practice (by filing a patent application, by practicing the invention, etc), the inventor's date of invention will be the date of conception. Thus, provided an inventor is diligent in reducing an application to practice, he or she will be the first inventor and the inventor entitled to a patent, even if another files a patent application (reduces the invention to practice) before the inventor.[2]

Every country other than the United States uses a first-to-file system. This means that, regardless of who the first inventor was, the person or legal entity who files a patent application first is the one who can be granted a patent for the invention. The first-to-invent versus first-to-file rule is one of the major differences between U.S. patent law and the patents systems of other nations. Harmonization efforts are underway with the goal being to unify the patent laws of various nations so that inventors have the same rights regardless of in which country a patent is granted.

[edit] Other considerations

Although patents normally go to the first inventor under a first-to-file system, an inventor who keeps the information secret or just does not publish generally loses the right to the patent and also does not establish prior art. Without prior art, a later inventor can get a valid patent on the same invention and then apply it against earlier inventor(s). All this is easily prevented simply by recognizing the invention and applying for a patent, or by publishing details of how to practice the invention, thus creating prior art.

[edit] Prior art searching

A "novelty search" is a prior art search that is often conducted by patent attorneys, patent agents or professional patent searchers before an inventor files a patent application. A novelty search helps an inventor determine if the invention is novel before committing the resources necessary to obtain a patent.

A "validity search" is a prior art search done after a patent issues. The purpose of a validity (or invalidity) search is to try and find prior art that the patent examiner overlooked so that a patent can be declared invalid. This might be done by an entity infringing the patent, or it might be done by a patent owner or other entity that has a financial stake in a patent to confirm the validity of a patent.

A clearance search is a prior art search done of issued patents to see if a given product or process violates someone else's existing patent. If so, then a validity search may be done to try and find prior art that would invalidate the patent.

[edit] Duty of disclosure

In the United States, inventors and their patent agents or attorneys are required by law to submit any references they are aware of to the United States Patent and Trademark Office that may be material to the patentability of the claims in a patent application they have filed. The patent examiner will then determine if the references qualify as "prior art" and may then take them into account when examining the patent application. If the attorney/agent or inventor fails to properly disclose the potentially relevant references they are aware of, then a patent can be found invalid for inequitable conduct.[citation needed]

At least Japan also has a duty of disclosure.[3] Australia has abolished its duty of disclosure with regard to the results of documentary searches by, or on behalf of, foreign patent offices, except where: (a) normal exam was requested prior to April 22nd, 2007, and (b) the foreign patent office search issued prior to April 22nd, 2007, and (c) acceptance (allowance) was officially advertised prior to July 22nd, 2007. [4]

[edit] Public participation in patent examination

Main article: Public participation in patent examination

With the advent of the Internet, a number of initiatives have been undertaken to create a forum where the public at large can participate in prior art searches. These forums have been related to both issued patents and pending patent applications.

[edit] Pending patent applications

More recently, different attempts to employ open Internet-based discussions for encouraging public participation commenting on pending US applications have been started. These may take the form of a wiki:

Patent examiners often use the online encyclopedia Wikipedia as a reference to get an overall feel for a given subject.[citation needed] Citations of Wikipedia as actual prior art are problematic, however, due to the fluid and open nature of its editing.[5]

[edit] References

  1. ^ See for example Article 54(2) EPC and 35 U.S.C. § 102
  2. ^ 2138.05 "Reduction to Practice" [R-5] - 2100 Patentability
  3. ^ http://www.gastle.com/bulletin5.htm
  4. ^ http://www.ipaustralia.gov.au/pdfs/news/ON20071018%20Patents%20Amendments%20Regulations.pdf
  5. ^ Patent Librarian Blogspot, September 4, 2006, citing Business Week September 4, 2006[unreliable source?]

[edit] See also

[edit] Notable prior art databases

For other patent search services, see Category:Patent search services.

[edit] Further reading

[edit] External links

[edit] Official institutions

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