Prior Art in Patents

Prior art in patents essentially means that your invention or idea has already been thought of. It does not even need to be commercially or physically viable yet, as long as someone has previously prepared, described, or presented something that is similar to your idea, it will be considered “prior art.”

What types of things are considered prior art?

A product or invention that already exists is the simplest form of prior art. It does not have to exist as a finished product. As long as there is evidence—whether it be a drawing or any other form—that idea or invention will be considered prior art when it comes to patents. That is why research has shown that for every product that enters the market, ten products will not. Hence, it is very important that you do your research to find out whether your invention is, in fact, original.

How to investigate whether your idea is original

The worldwide patent system is the first and foremost place you should begin your research. This system is the most comprehensive search engine for patents and includes over 90 million documents collected by patent offices around the world. With a record number of people having access to the internet, researching whether your idea is original has never been easier. However, you should also consider hiring a patent attorney to be thorough.

A prior art search is a prerequisite to establishing a “Freedom to Operate.” If you’ve begun your prior art search and realize there is already prior art that exists, it can be used to reject your idea in your patent application and during litigation. Prior art can include everything, including but not limited to:

  • a document
  • a public showing of a product
  • a product sale
  • public knowledge of the product

The Paris Convention and Intellectual Property

Created in 1883, the Paris Convention is an intellectual property treaty that gives an inventor a “priority right” depending on the patent application filed in a country. A priority right simply means that if the inventor files an application for the same patent in a different country within one year after filing it in the first country, the subsequent applications will take on the same “priority date” as the first application. Thus, the Paris Convention gives the inventor one year to determine which countries he or she will file the same patent applications without having to have multiple submission dates.

What are some exceptions to prior art?

An inventor may be able to prove that there is no prior art, which would affect his patent application, even if the same or similar invention exists. For example, if the inventor can prove that the invention was kept secret and never made public, then it could be considered an exception to the prior art rule. Or, if the inventor can show that the invention was abandoned by the prior inventor, the current inventor could overcome the prior art rule.

What is the “America Invents Act”?

In 2013, the United States enacted the “America Invents Act” (AIA). For patent applications prior to enactment, inventors could nullify prior disclosures of prior art by demonstrating they thought of their ideas or inventions and continued to diligently work on it before they filed a patent application, if it was within one year of filing.

However, for patent applications filed after the date of enactment of AIA, prior disclosures are not allowed to be disqualified as prior art unless the inventor can demonstrate that the prior disclosure was actually derived from the inventor’s own work. Before 2013, the prior law enabled inventors to benefit from their ideas or inventions without having to diligently file a patent application, as long as they filed it within one year from the prior disclosure.

Check for competing art

Lastly, in addition to researching prior art, you should also be on the lookout for any competing art. Competing art may not be the same idea or invention, but essentially perform the exact same thing as your invention.

If you need help with research prior art for patents, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.