By UpCounsel Contributor 

What is prior art?

When filing a patent application, prior art includes anything that can be used to establish that the state of technology, before you filed your patent application, already teaches your invention or includes enough relevant information to render your invention obvious. While prior art can technically be from any source, the U.S. Patent and Trademark Office (USPTO), as well as other Patent Offices around the world, most often rely on issued patents, published patent applications, and scientific, academic, or industry publications to establish that the invention of a patent application is anticipated or obvious.

Why would I want to file a search for prior art?

Filing a patent application can be an expensive proposition and often inventors would like to know whether they are eligible to receive a patent before going through the expense of filing.

Will a prior art search let me know if I am infringing someone else’s patent?

There are really two different types of searches. A novelty search is a search that an inventor would perform before filing a patent application. A clearance search is a search that someone would perform, before launching a product, to make sure their product does not infringe the patents of anyone else.

The novelty search looks through all prior art including patent applications that were never issued, expired patents, and non-patent documents and tries to determine if the art found would anticipate, or otherwise render unpatentable, patent claims that would be written for the client’s patent application.

The clearance search, on the other hand, generally looks only to issued non-expired patents for a particular jurisdiction and tries to determine whether the patent claims of these patents cover an actual product that the client is looking to bring to market.

Because the novelty search compares the client’s would-be claims to what is taught in the art while the clearance search compares claims of actual issued patents to elements of an actual product, these two types of searches are quite different. Thus, the prior art search that an inventor may perform prior to filing a patent application may have little value in trying to determine if the inventor’s invention infringes the patent claims of others.

Am I required to search for prior art?

No. United States patent law does not ordinarily require that applicants conduct a search for prior art.

Why wouldn’t I want to search for prior art?

1) Search is not Dispositive: Even the most rigorous prior art search is not guaranteed to find all sources of prior art. In fact, U.S. patent applications are not generally published until 18 months after they are filed, so there is a great deal of prior art that is not available to be found prior to your filing that will likely be considered when your application is being examined. This prior art is often called “hidden prior art.”

2) Legal Duty to Disclose: While US patent law does not ordinarily require that applicants search for prior art, applicants are legally obligated to disclose all potentially relevant prior art that they have found to the USPTO. Therefore, if you search for prior art, you may be helping the USPTO to reject your patent application.

3) Expense: A cursory search of US patents and published applications might not be very expensive; however, prior art can come from any source anywhere in the world. For example, a Japanese patent application publication can be prior art. A German Ph.D dissertation may be prior art. An IEEE journal article may be prior art. To find prior art from these sources, an applicant would most likely want to hire a professional search company with access to proprietary databases to perform the search. Such a search may cost over a thousand dollars and the results of this search would be a laundry list of potentially relevant documents which an applicant would then most likely wish to hire a patent attorney to analyze. The total cost of performing such a search and analyzing the results could easily cost more than the filing of the patent application.

If I do not perform a prior art search, how do I know whether I should file?

Most applicants tend to work in the industry they are inventing within and so they may have good first-hand knowledge of what is known in the art. However, where the applicant does not work in the industry they are inventing within, it may make sense for the applicant to consult with a patent attorney to perform a cursory search of domestic issued patents and published patent applications. This, in combination with a Google search, may be useful to provide the applicant who does not have direct industry experience with enough confidence to proceed with filing a patent application. But please keep in mind that such a search offers no guarantee that all prior art will be found, and as always, the applicant has a duty to disclose to the USPTO all potentially relevant prior art that is found, so make sure to keep good records of your search results.

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About the author

UpCounsel Contributor

UpCounsel Contributor

UpCounsel was launched in 2012 with the vision of allowing businesses to move and grow faster by revolutionizing the way legal work gets done. With the world’s largest network of independent lawyers, combined with an automated backend platform, UpCounsel connects companies of all sizes with the right attorneys for their needs, quickly, easily, and cost-effectively. Whether it’s providing temporary overflow or gap coverage, a part-time specialist on retainer, or an entire freelance legal department, we streamline the attorney-client workflow and offer a 21st century legal experience. That’s why more than 10,000 businesses, from startups to Fortune 500, have trusted us with their legal needs.

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