What is Prior art
Prior art (also known as or state of the art) includes 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.
What can be prior art?
Any publication, in any form, in principle qualifies as prior art. It includes, patents, scientific publications, textbooks, newspapers, lectures, demonstrations and exhibitions and any other disclosures.
Also, the intended audience for the publication is mostly irrelevant. Whether an invention is described in a highly technical electrical engineer's journal, or in a junior high school textbook, does not matter. The textbook counts as prior art just like the journal, if both were published before the filing date of the patent application.
Publicly available products also count as prior art, even though it may be very difficult to determine exactly what the product is made of or how it works. If a device is put on the market before the patent application filed on a feature in that device, the feature is no longer novel. Usually, the sale or other disposal of the product is enough to make all its features prior art for later filed applications. If the product is not sold, but only demonstrated to the public, then only those features which the public could observe count as prior art.
In the USA, selling or publicly displaying an invention counts as prior art (35 US Code 102(b)) even when the invention was completely hidden from view as part of a larger machine or article, if the invention is otherwise used in its natural and intended way and the larger machine or article is accessible to the public. But if the use was under the control of the inventor, the invention was not publicly used and so the use does not count as prior art.
The inventor might want to disclose his invention to a third party before filing a patent application, for example to evaluate the commercial value or to get help in developing a prototype. If such a disclosure is done in confidence, it does not count as prior art. While a written non-disclosure agreement (NDA), signed by both parties before the invention is disclosed, is probably the best way to go, it is by far not required. As long as the inventor can prove that the disclosure was confidential, it does not count as prior art. Oral disclosures, such as lectures or non-confidential discussions between the inventor and a third party, is also count as prior art.
To determine whether something is prior art, the filing date of the patent application or patent in question is crucial. If the publication or disclosure was made before the day of filing, it counts as prior art. It doesn't matter how long before the day of filing the publication was made.
Another requirement for document to qualify as prior art is that it is enabling. In other words, the document must enable an average skilled person to practice the invention as claimed.
Types of prior art search
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.
What can be prior art?
Any publication, in any form, in principle qualifies as prior art. It includes, patents, scientific publications, textbooks, newspapers, lectures, demonstrations and exhibitions and any other disclosures.
Also, the intended audience for the publication is mostly irrelevant. Whether an invention is described in a highly technical electrical engineer's journal, or in a junior high school textbook, does not matter. The textbook counts as prior art just like the journal, if both were published before the filing date of the patent application.
Publicly available products also count as prior art, even though it may be very difficult to determine exactly what the product is made of or how it works. If a device is put on the market before the patent application filed on a feature in that device, the feature is no longer novel. Usually, the sale or other disposal of the product is enough to make all its features prior art for later filed applications. If the product is not sold, but only demonstrated to the public, then only those features which the public could observe count as prior art.
In the USA, selling or publicly displaying an invention counts as prior art (35 US Code 102(b)) even when the invention was completely hidden from view as part of a larger machine or article, if the invention is otherwise used in its natural and intended way and the larger machine or article is accessible to the public. But if the use was under the control of the inventor, the invention was not publicly used and so the use does not count as prior art.
The inventor might want to disclose his invention to a third party before filing a patent application, for example to evaluate the commercial value or to get help in developing a prototype. If such a disclosure is done in confidence, it does not count as prior art. While a written non-disclosure agreement (NDA), signed by both parties before the invention is disclosed, is probably the best way to go, it is by far not required. As long as the inventor can prove that the disclosure was confidential, it does not count as prior art. Oral disclosures, such as lectures or non-confidential discussions between the inventor and a third party, is also count as prior art.
To determine whether something is prior art, the filing date of the patent application or patent in question is crucial. If the publication or disclosure was made before the day of filing, it counts as prior art. It doesn't matter how long before the day of filing the publication was made.
Another requirement for document to qualify as prior art is that it is enabling. In other words, the document must enable an average skilled person to practice the invention as claimed.
Types of prior art search
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.
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