An intellectual property law firm: patents, trademarks, and copyrights.

Prior Art Definition

What is prior art?

Generally, prior art is anything in the public which shows the entire invention or makes the invention obvious – and existed before the filing date for a patent.

What qualifies as prior art?

Prior art is something which prevents a proposed invention from obtaining a patent – or negates the validity of a patent. Prior art can be: published text; a speech given at a conference; a patent; a journal article; a physical product on the market; or other public disclosures.

Prior Art Examples

Prior art examples

Prior art can be any of the following:

US patents
Foreign patents
US patent applications
Textbooks
Scientific journal articles
Internet blog posts
Youtube videos
Etc. - other public disclosures

What is an example of prior art?

An example of prior art is a US patent which shows the same invention or shows something which when combined with another source would make the invention obvious.

For instance, an inventor plans to apply for a new automotive wheel patent which has particular spoke features.

If there is a previous patent which has all the spoke features, then that previous patent would be prior art.

If there is a previous patent which has some of the spoke features and there is another patent with some of the other spoke features – and someone having ordinary knowledge of automotive wheels would understand to combine the features from both patents – then both of those two patents are considered prior art.

Are foreign patents prior art?

Yes. Foreign patents can be prior art.

Prior Art Analysis

Overview of a prior art search and analysis

A prior art search will attempt to find relevant prior art. The prior art will be analyzed to determine if the prior art will prevent a patent from being issued or invalidate a challenged patent.

Elements of a prior art analysis

The analysis will look at two main elements:

1) novelty

A claim for an invention lacks novelty if there is prior art which contains each and every element of the claim.

2) obviousness

A claim for an invention will be considered obvious if: prior art; a combination of prior art; and/or common sense – would have made the claim obvious to someone having ordinary skill in the art.

Priority Date in Relation to Prior Art

Prior art and priority date

Each patent will have a priority date which is the earliest date which a patent can claim to beat out another applicant – or prior art – for patent rights.

A priority date can be the filing date of the nonprovisional application. Or, the priority date can the filing date of a previous application in the same patent family. For instance, if a provisional patent application is filed and a nonprovisional claims the benefit of that provisional application (or the provisional application is converted to a nonprovisional application) then the priority date will be the filing date of the provisional application.

Searching for Prior Art

Prior Art Search

A basic prior art search will usually include:

An internet search
A search on patent databases (USPTO full patents, USPTO patent applications, Escapenet, Google Patents, etc.)

Prior art and patent search

A prior art search is also many times called a patent search.

Many times a prior art search is thought of as a patent search because previous patents will be searched – as the main focus of the prior art search.

Prior art can include more than patents – but sometimes a prior art is called a patent search.

Prior art and patents

Patents are a major source of prior art which prevents other inventions from obtaining a patent. Although other prior art – besides patents – can count as prior art.

Timing of a Prior Art Search in a Patent Life Cycle

Prior Art Search Before a Patent Application

A prior art search can take place before a patent application to determine the likelihood of the invention obtaining a patent. This is called a patentability search - or analysis.

Prior Art Search During Litigation (a lawsuit challenging a patent)

Prior art will be analyzed to determine if a patent will withstand an attack from a challenger.

Also the challenger - or suing entity - will also perform a prior art search to find evidence that the patent should not have been granted in the first place.

Generally, an analysis of whether a patent should have been issued is a validity analysis.

Prior Art Search Before Starting a New Business Activity

If a business is starting a new business activity, the business will determine if their planned actions will infringe on another's patent. A search for this purpose can also be called -determining the patent landscape - which is determining what other patent rights exist - or in essence what other prior art exists.

A business may have a patent - but that patent may infringe another patent because the business has an improvement of a past invention. The improvement patent includes each and every element of a claim in a previous patent and would therefore infringe another patent. This type of analysis is called a Non-infringement Analysis - or Freedom to Operate Analysis.

A business may know of other existing patents and licensed use of those other patents - but the business wants to determine if the combination of the business' own patents and licenses is sufficient to enable the business to execute its business plan without infringing another's patent. This type of analysis is called a Freedom of Action analysis.

Variability in a Prior Art Search

Overview of differences in amount of time spent on a prior art search

The amount of time spent on a prior art search can vary depending based on budget concerns related to the analysis being a precursor to: a patent application; a new business activity; or a lawsuit - or during a law suit.

Basic prior art search

A basic internet search and search of patent databases is common when determining the likelihood of a invention obtaining a patent – or in other words a patentability search. Typically the budget of an applicant will determine the amount of time spent on the prior art search. For certain applicants it is cost prohibitive to spend tens to a hundred of hours searching for prior art – to determine if a patent can be obtained.

Therefore most of the time, a prior art search is usually a fraction of the overall budget for the patent application. The prior art search is used as check to determine if the invention has high enough probability to obtain a patent.

For applicants with a very large budget a patentability search will not be more than a hundred hours (a large expense) because the patent application and patent prosecution process will not take a hundered hours - its not economical to predict if something will happen when it would be the same cost or a less expense to just try.

Extensive prior art search

Long and extremely thorough prior art searches occur when: 1) a patent is determined to have value - many times when the patent is integral to a business by generating profit; or 2) when there if a very large upfront cost related to a patent - usually when launching a new product.

A very extensive prior art search can occur if there is a dispute over patent rights – such as one company claiming another company infringed their patent. The very extensive prior art search will occur in an attempt to invalidate the patent which the other side is trying to claim is being infringed. The defendant tries to invalidate the patent of the suing party - in an effort for the defendant to avoid liability because the patent is not valid in the first place.

In an effort to prevent infringement, an extensive prior art search will be performed to determine if a certain technology will infringe upon another patent. The overall cost for some applicants of rolling out a new product – and the threat of being hit with a patent law suit – makes an extensive prior art search – possibly hundreds of hours of work – worthwhile.

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