What Is Prior Art?

Prior art is a legal concept that states that a creation, invention, or other intellectual property already exists in some form and is already known.

Prior art is defined under the United States Code, Title 35, Section 102. The most obvious form of prior art is an existing product on the market, but this is not where the concept ends. Prior art is simply the existence of evidence that someone already knows about your invention and that it's not unique, because there's something out there that is very similar to it. Just about anything can be prior art, from cave paintings to centuries-old technology.

If your invention or creation already exists in some earlier and very similar form, you may not be able to bring it to market based on the fact that someone else already owns it in the form of holding copyright protection or a patent.

Not all prior art, however, disqualifies you from a patent. Prior art essentially refers to the entire span of human knowledge, and if you can effectively differentiate your invention even from a similar one, you may still be able to secure a patent. In fact, prior art searches are essential to your patent process.

Changes to Patent Laws Involving Prior Art

In 2011, Congress passed the Leahy-Smith America Invents Act. The Act drastically altered what is considered prior art. It switches patent granting priority from 'first to invent' to 'first to file'.

The most important change is what is defined as prior art. First, prior art must now be used publicly to be considered prior art. This helps to clear up patent ownership and allows for easer applications. Second, world-wide forms of prior art now count as prior art. Previously, only a patent or art used in a publication was eligible.

Another important change to be aware of is in terms of comparison dates. Before the act, prior art was compared to the date of invention. Now, prior art is compared to the date an invention is filed for patent. This means that priority is given to whomever filed a patent application first, not who actually invented a product first.

What Is Competing Art?

Competing art is an important complementary concept to prior art. Competing art includes creations and ideas that might not be the same as yours, but they accomplish the same ends. Since most inventions are created to solve a problem, competing art can show you other solutions that may be more helpful than the one you're bringing to market.

In addition, it's always wise to know what the competition has to offer in order to best market your idea in an increasingly crowded marketplace.

Why Is Prior Art Important?

Prior art is important because it affects your ability to gain intellectual property (IP) rights over your invention, if it's not novel. If you cannot gain IP rights, your idea many have little to no value on the open market, unless you seek to license the property from existing IP rights holders.

In addition, those who do have IP rights to the prior art could take legal action to protect those rights, which can cost you thousands or even millions of dollars in damages, depending on how popular the product in question is.

Likewise, if the idea is so old as to be common knowledge or no longer defensible under current laws, you can't own the idea, though in this case you may still be able to bring some market value to the table. In such a case, however, others may be able to copy your idea without you being able to bring damages.

Taking the Next Step

In order to be truly original, an idea has to improve upon existing devices in a way that's not immediately obvious to most experts in the area. This can be a very tricky thing to define.

If you come up with an entirely new way to put together a set of components, but their function when assembled seems completely obvious, your new creation may not be considered an invention. If, however, they work in a way that is surprising or significantly improves upon existing devices, you may have a true novelty on your hands.

Novelty and Value

As you can see, having an idea that's novel, or original, is important to your ability to control your product and assign it value in the marketplace. However, in order to have strong value, it has to show some significant improvement over existing art. This can mean something as straightforward as greatly reducing production costs or a technological innovation that improves the utility of the device.

What Is a Patent?

In its simplest terms, a patent is legal documentation that shows you own the rights to your property and other people may not reproduce it or create substantially similar or derivative products without your permission. Anyone who invents a new (novel) or useful machine, process, or physical creation may apply for a patent. Creations that are subject to patents include:

  • Processes: Any act or method that includes technical or industrial procedures is a process. This defines the way something performs and not the thing itself. Computer software uses processes. Drugs are created using processes. Games are played using processes.
  • Machines
  • Manufactured Items
  • Compositions: This refers to chemical compounds or other compositions or mixtures of ingredients. Everything from drugs to recipes count as compositions.

Note that any creation or process must be considered useful in order to be patentable. It must also function for its specified purpose. You cannot patent things you don't reasonably own, like the laws of physics or nature, or ideas (which are considered abstract). Finally, the creation has to be new and unique — a prior patent must not exist for a substantially similar creation.

Patents vs. Copyrights and Trademarks

Copyrights and trademarks exist to protect expressions of ideas the moment they're finished. The instant you complete a painting or put words on a page, for example, you receive copyright. The moment you use a name to represent your business, that name can be considered a trademark in relation to your business.

For a patent, on the other hand, there is a complex list of forms and filings that must be undertaken to get legal protection for your invention. You'll also need to do a great deal of research.

What Prior Art Means for Your Patent Process

It's important to conduct extensive searches before you attempt to file a patent or legal protection for your work in order to make sure that your art is truly novel. For every product that hits the market, many experts estimate that there are 10 that never come to fruition.

In order to truly have an invention that is novel, you'll need to do extensive research to discover what prior art exists and the ways in which your solution to a problem is better than all other solutions out there. This research includes both product searches and patent searches.

Patent and Product Searches

Your invention's future can depend on you conducting this research. If you miss an instance of prior art, but a potential investor finds it, you may not get the funding you need. If you find something that looks similar, don't try and rationalize it. Also remember that just because you or a company (even the Patent Office) didn't find it, that doesn't mean your work is objectively novel.

Take some time to think about the keywords that will best help you search your product. If you're building a better mousetrap, just searching for "mousetrap" is going to provide you with more hits than you can possibly wade through. You need to pare your invention down to its specifics—what it does as well as what it is. You might spend a few minutes, or even days of time conducting this search.

There are many resources to accomplish the research you need to undertake. These include the Espacenet database of the European Patent Office, which makes available patents and documentation of a full 90 million inventions over many decades by many different nations.

When conducting product searches, check online and "brick and mortar" sources. Check catalogues, periodicals, books, and talk to suppliers and retailers who have years of experience with a variety of different products. Don't discount retirees—in fact, their long experience could be even more valuable than those currently working.

This process is mentally difficult, because you are actively trying to prove your own invention isn't novel, but it's essential securing a patent.

Searching Espacenet

Searching this database is easy; just navigate to Quick Search and search the worldwide database on words. You're looking for every patent that has any relation at all to your product, and then you'll need to interpret the findings.

Look over your titles to see if what's there is relevant to your invention; if not, try a different set of keywords in a new search. Once you've got a relevant list, open up titles that seem relevant and examine the information on the bibliographic screen. If it looks like it's important related to your invention, examine the patent either by downloading it, or by looking over the Mosaics link, or search the report and claims.

If you don't find enough to satisfy you here, check the ECLA or Classification: European number under the most relevant-seeming patent, which can provide more information and allow you to perform a new advanced search based on that classification. If an ECLA gives you a huge list of results, you can combine it with keywords and perform a new advanced search to narrow down the options.

Keep repeating this process until you've got a solid list of potential results.

Professional Search Services

If you can afford it, it's a good idea to use a professional patent search to check for prior art. These can include Patent Library (PATLIB) centers, databases that may be offered by local libraries and business centers, commercial searches by various national Patent Offices, and commercial providers. Finally, patent attorneys can provide essential and professional search service results as well as help you to interpret any existing search findings you have.

Does Prior Art Automatically Disqualify Me?

The short answer is, "no." Just because something exists in some respect doesn't necessarily mean you can't release a similar product. You cannot obtain a patent in the following situations:

  • The invention or a very similar one has been patented anywhere else in the world.
  • The invention has been previously described anywhere in the world in a printed publication.
  • The invention or something substantially similar is public knowledge in the United States, even if not published or patented.
  • The invention has been publicly used, demonstrated, or offered up for sale in the U.S. over one year prior to a U.S. application filing.

Here are the situations in which you may be able to secure a patent:

  • The invention was known outside the United States, but not within the United States.
  • The invention was sold in other nations, but not within the U.S. for more than a year before application filing.
  • The rights to the invention were offered anywhere in the world.
  • The invention has been publicly used or demonstrated outside of the U.S. but not within U.S. borders for more than a year prior to application filing.

When Does Prior Art Not Count?

There are exceptions to prior art in which it may not count against filing a patent application. Certain experimental public uses might not count as demonstration or revelation. If an invention was secret and remained secret up until being abandoned by the original inventor, it may not apply as prior art.

Important Time Concerns

Remember that your invention must work as intended in order to get a patent. This means before you do anything, make sure you have a functioning prototype. If you publish an article, demonstrate or publicly describe your article either in the United States or a foreign country, you have one year to file an application for a patent. If you fail to meet this deadline, you may not be able to get a patent for your invention. One year is the magic number as far as the Patent Office is concerned; any event that establishes the existence of a piece of art starts the clock ticking, and after a year passes, applications for patents based on that invention are barred.

What Is the America Invents Act?

The AIA or America Invents Act, was passed in 2013 and changed the concept of prior art. Applications before the AIA passed would allow the inventor to seek a patent if they could prove that they conceived of and worked on their invention before the prior art was revealed, provided that the revelation wasn't more than a year out from the inventor's application.

After the AIA, this disqualification no longer exists. Now, the inventor must prove that the prior art was, in fact, derived from the invetor's own work, rather than being a case of parallel development. It's also important to understand that the AIA only applies to American patents; in many countries, any time a work is disclosed before the patent application is submitted can disqualify it, even if such disclosure was the inventor's own work.

Provisional Patents

Provisional patents are tricky. Tens of thousands of these are awarded every year and are eventually abandoned without their filers following through. In general, these provisional filings are not considered prior art. However, if a provisional application eventually gets approved, its effective date will be back-dated to the original provisional filing date.

This can conflict with the basic idea that an invention is considered prior art the moment it is published and can cause great complications for those seeking to file new patents. The process to challenge prior art as relates to provisional patents goes as follows:

  1. The challenger has to explain why their application takes priority over the prior art.
  2. The person holding the provisional patent then argues that the priority claim doesn't satisfy the patent description.
  3. The challenger then has to provide support for their claim.

What Does the Patent Application Include?

Your patent application will include the following elements, among others:

  • Descriptions of prior art related to your invention
  • A summary of your invention, including how it differs from prior art
  • A detailed description of how your idea will work, called a "preferred embodiment"
  • A legal description of your invention, called a "claim." You may have multiple claims.
  • Any necessary drawings and diagrams

The application will be submitted to the Patent Office with a required submission fee. A patent examiner will then go over the application. Don't be surprised if your first effort is rejected; this happens often. You and your attorney will then amend and resubmit, possibly several times, until it is finally accepted.

The moment you submit your application, however, you can mark your product as "patent pending" and begin putting it on the market.

What Are Product Specifications?

The description and claims taken together, are called the "specification." This is possibly the most important part of your application as it serves to explain in detail how your item works, how it differs from other patented items, and what parts of it are unique to you.

Be as detailed as you can, from your general background to intimate details of the product's workings. Include all math and formulae involved in the invention. This isn't the time to protect company secrets. Once your application is filed it cannot be amended, and if you're required to amend it by the examiner, you can only make changes that your drawings and description can infer.

The proper order for a description section is:

  1. Product title
  2. Technical information
  3. Background and descriptions of prior art
  4. Explanation of the problem your invention solves
  5. Figures (math, chemical formulae, etc)
  6. Detailed description of the item
  7. Example of how it's intended to be used
  8. Listing of any relevant sequence

Be precise and specific. Don't name it for yourself, and don't call it "new and improved." Make the title descriptive and short, as well as easy to search. Make your technical information broad, and then work towards specifics in your background information. Talk about the problems that have been faced by other inventors in prior art and how you've overcome those problems.

In your drawings, give figure numbers and brief descriptions of the illustrations to allow you to refer to the diagrams during your description. Be consistent in your references. Be as detailed as possible in your description. Discuss every part, no matter how small, and the role it plays in the function. Describe your thought processes and how everything works together.

In your example, too, be detailed. Also, include any considerations of risks and warnings that would need to be obeyed in the field. Include any sequence listing that might be relevant to your invention.

Take the time to look at the patents you called up in your prior searches. These can provide valuable examples and information.

How Can I Deal With Complex Patent Laws?

These rules get far more complex, the further into patent law you dig. There can be differences between whether a product was used or known or existed within the U.S. or elsewhere and the specific timeframe. Public exhibition, and publications, can be somewhat ambiguous under the law as well.

There is likely some product somewhere that comes close to yours, but how closely it resembles yours, where it is, how long ago it existed and a variety of other issues come into play. These issues can be incredibly complex and time consuming to investigate, and the best bet for anyone trying to obtain a patent for an invention is to seek the services of a qualified patent law attorney.

If you need the services of an experienced patent attorney, the best resource to find the right legal professional for you is the UpCounsel marketplace. When you post your job on UpCounsel, it will be seen by some of the country's best attorneys. In addition, our pricing is much more affordable than what you would find by hiring a patent attorney from a traditonal form. Get the legal help that you need by registering with UpCounsel today.