Prior art

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Prior art (also known as state of the art [1] or background art [2] ) is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, [3] prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems. [4] [5] [6]

Contents

The prior art is evaluated by patent offices as part of the patent granting process in what is called "substantive examination" of a patent application in order to determine whether an invention claimed in the patent application meets the novelty and inventive step or non-obviousness criteria for patentability. It may also be considered by patent offices or courts in opposition or invalidity proceedings. Patents disclose to society how an invention is practiced, in return for the right (during a limited term) to exclude others from manufacturing, selling, offering for sale or using the patented invention without the patentee's permission.

Patent offices deal with prior art searches in the context of the patent granting procedure. A patent search is frequently carried out by patent offices or patent applicants in order to identify relevant prior art. [7] [8] Certain patent offices may also rely on the patent search results of other patent offices or cooperate with other patent offices in order to identify relevant prior art. [9] Prior art may also be submitted by the public for consideration in examination or in opposition or invalidity proceedings. Relevant prior art identified by patent offices or patent applicants are often cited by patent applicants in patent applications and by patent offices in patent search reports. [10]

Defining prior art

Prior art may comprise information that is disclosed to the public in written form, oral form, or by use. Sources of disclosure in written form may include published patents or patent applications or scientific and technical books and journals. Unpublished patent applications may also be considered prior art under certain circumstances, for example where an unpublished patent application was filed at the same patent office before the effective filing date of the patent application in question.

To anticipate the subject-matter of a patent claim, prior art is generally expected to provide a description sufficient to inform an average worker in the field (or the person skilled in the art ) of some subject matter falling within the scope of the claim. Prior art must be available in some way to the public, and in many countries, the information needs to be recorded in a fixed form somehow.

Specific cases

Traditional knowledge, such as traditional medicine, may be considered prior art. [11] Information covered by non-disclosure agreements or similar may not be considered to have been disclosed to the public and thus not prior art. [12]

If an invention has been described in the prior art or would have been obvious from what has been described in the prior art, a patent on that invention is not valid.

Information kept secret, for instance, as a trade secret, is not usually prior art, provided that employees and others with access to the information are under a non-disclosure obligation. With such an obligation, the information is typically not regarded as prior art. Therefore, a patent may be granted on an invention, even though someone else already knew of the invention. A person who used an invention in secret may in some jurisdictions be able to claim "prior user rights" and thereby gain the right to continue using the invention. As a special exception, earlier-filed and unpublished patent applications do qualify as prior art as of their filing date in certain circumstances.

Prior art generally does not include unpublished work or mere conversations (though, according to the European Patent Convention, oral disclosures also form prior art—see Article 54(2) EPC).

Effective date of patents and patent applications as prior art

It is typical for a patent office to treat its own patents and published patent applications as prior art as of their filing dates, [13] [14] [15] although under the European Patent Convention, this applies only to novelty rather than inventive step. [16] However, United States patent law before the Leahy-Smith America Invents Act (AIA) included the Hilmer doctrine, under which United States patents and patent application publications were prior art only as of their earliest effective United States filing dates, i.e., disregarding any foreign priority claimed in those patents and patent application publications. The AIA has abolished the Hilmer doctrine and makes United States patents and patent application publications that name another inventor prior art as of when they were "effectively filed." [17]

Usage in litigation

Arguments claiming prior art are used in defending and attacking patent validity. In one U.S. case on the issue, the court said:

One attacking the validity of a patent must present clear and convincing evidence establishing facts that lead to the legal conclusion of invalidity. 35 U.S.C. § 282. To establish invalidity under 35 U.S.C. § 103, certain factual predicates are required before the legal conclusion of obviousness or nonobviousness can be reached. The underlying factual determinations to be made are

—  Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). [18] [19]

Prior art searches

Patent offices deal with prior art searches in the context of the patent granting procedure. A patent search is frequently carried out by patent offices or patent applicants in order to identify relevant prior art. [7] [8] Certain patent offices may also rely on the patent search results of other patent offices or cooperate with other patent offices in order to identify relevant prior art. [9] Prior art may also be submitted by the public for consideration in examination or in opposition or invalidity proceedings. Relevant prior art identified by patent offices or patent applicants are often cited by patent applicants in patent applications and by patent offices in patent search reports. [10]

Types of prior art searches

Novelty

A "novelty search" is a prior art search that is often conducted by patent attorneys, patent agents or professional patent searchers before a patent application is filed. A novelty search helps an inventor determine if the invention is novel before committing the resources necessary to obtain a patent. The search may include searching in databases of patents, patent applications and other documents such as utility models and in the scientific literature. Novelty searches can also be used to help an inventor determine what is unique about their invention. Anything not found in the prior art can be potentially patentable. Thomas Edison, for example, did not get a patent on the basic concept of the light bulb. It was already patented and therefore forms part of the prior art. Instead, Edison got a patent on his improvements to the light bulb. These improvements included a very thin filament and a reliable technique for joining the white hot filament to the room temperature lead wires. [20]

A novelty search is also conducted by patent examiners during prosecution of the patent application. For instance, examiner's search guidelines applicable to the United States are found in the U.S. Manual of Patent Examining Procedure (MPEP) 904.02 General Search Guidelines, Prior Art, Classification, and Search. [21]

Validity

A "validity search" is a prior art search done after a patent issues. The purpose of a validity (or invalidity) search is to find prior art that the patent examiner overlooked so that a patent can be declared invalid. This might be done by an entity infringing, or potentially 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. Crowdsourcing, where a large number of interested people search for prior art, may be effective where references would otherwise be difficult to find. [22]

Clearance

A clearance search is a search of issued patents to assess whether a given product or process violates someone else's existing patent. If so, then a validity search may be done to try to find prior art that would invalidate the patent. A clearance search is a search targeting patents being in force and may be limited to a particular country and group of countries, or a specific market.

Notable prior art databases

The Internet Archive Wayback Machine is recognized by the USPTO as a valid source of prior art on the Internet, though generally the date of archiving is considered the first published date, rather than the date on any documents that have been archived. [23] [24]

Duty of disclosure

In the United States, inventors and their patent agents or attorneys are required by law to submit any references they are aware of to the United States Patent and Trademark Office that may be material to the patentability of the claims in a patent application they have filed. The patent examiner will then determine if the references qualify as "prior art" and may then take them into account when examining the patent application. If a person having a duty to disclose, acting with deceptive intent, fails to properly disclose the material references of which they are aware, then a patent can be found unenforceable for inequitable conduct. [25]

Japan also has a duty of disclosure. [26] [27] [28]

Australia has abolished its duty of disclosure with regard to the results of documentary searches by, or on behalf of, foreign patent offices, except where:

Public participation in patent examination

With the advent of the Internet, a number of initiatives have been undertaken to create a forum where the public at large can participate in prior art searches. These forums have been related to both issued patents and pending patent applications.

Pending patent applications

More recently, different attempts to employ open Internet-based discussions for encouraging public participation commenting on pending U.S. applications have been started. These may take the form of a wiki:

Patent examiners often use the online encyclopedia Wikipedia as a reference to get an overall feel for a given subject. [30] [31] Citations of Wikipedia as actual prior art can be problematic, however, due to the fluid and open nature of its editing, and Patents Commissioner Doll said the agency used Wikipedia entries as background and not as a basis for accepting or rejecting an application. [31]

See also

Related Research Articles

In law, an abstract is a brief statement that contains the most important points of a long legal document or of several related legal papers.

In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

In a patent or patent application, the claims define in technical terms the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of paramount importance in both prosecution and litigation.

Novelty is one of the patentability requirement for a patent claim, whose purpose is to prevent issuing patents on known things, i.e. to prevent public knowledge from being taken away from the public domain.

Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. An issued patent can claim only one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the possibility of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.

Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a "provisional patent".

<span class="mw-page-title-main">Utility model</span> Patent-like intellectual property right

A utility model is a patent-like intellectual property right to protect inventions. This type of right is available in many countries but, notably, not in the United States, United Kingdom or Canada. Although a utility model is similar to a patent, it is generally cheaper to obtain and maintain, has a shorter term, shorter grant lag, and less stringent patentability requirements. In some countries, it is only available for inventions in certain fields of technology and/or only for products. Utility models can be described as second-class patents.

The United States is considered to have the most favorable legal regime for inventors and patent owners in the world. Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting from a patented technology without the consent of the patent holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention (EPC) and its case law, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.

The involvement of the public in patent examination is used in some forms to help identifying relevant prior art and, more generally, to help assessing whether patent applications and inventions meet the requirements of patent law, such as novelty, inventive step or non-obviousness, and sufficiency of disclosure.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

<span class="mw-page-title-main">Internet as a source of prior art</span> Legality status of citing the Internet for state-of-the-art public knowledge

In the context of patent law, using the Internet as a source of prior art when assessing whether an invention is novel and inventive, may be problematic if it is difficult to ascertain precisely when information on websites became available to the public.

<span class="mw-page-title-main">Patent drawing</span> Drawings illustrating patents

A patent application or patent may contain drawings, also called patent drawings, illustrating the invention, some of its embodiments, or the prior art. The drawings may be required by the law to be in a particular form, and the requirements may vary depending on the jurisdiction.

In patent law, a search report is a report established by a patent office, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable. The documents mentioned in the search report usually form part of the prior art.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is Article 54 EPC. Namely, "an invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again."

Under the European Patent Convention (EPC), any third party –i.e., essentially any person– may file observations on the patentability of an invention which is the subject of a European patent application or, after grant, subject of a European patent, especially to draw the attention of the European Patent Office (EPO) to some relevant prior art documents. This is a form of public participation in the examination of patent applications.

References

  1. ↑ Sreenivasulu, N. S.; Raju, C. B. (2008). Biotechnology and Patent Law: Patenting Living Beings. Manupatra. p. 95. ISBN   9788189542313. The European Patent Convention uses the term 'state of the art' which is equivalent to prior art (...)
  2. ↑ "The expression 'background art' ... must have the same meaning as the more familiar expression 'prior art'" in EPO Board of appeal decision T 11/82 of 15 April 1983 Archived 29 July 2018 at the Wayback Machine , Headnote II and Reasons 15. See also Rule 42(1)(b) and(c) EPC (previously Rule 27(1)(b) and (c) EPC 1973, where the term is used).
  3. ↑ See for example Article 54(2) EPC and 35 U.S.C.   § 102
  4. ↑ "Regulations under the PCT: Rule 33 Relevant Prior Art for the International Search". WIPO. Archived from the original on 29 December 2021. Retrieved 29 December 2021.
  5. ↑ "Certain aspects of National/Regional Patent Laws" (PDF). WIPO. October 2021. Retrieved 29 December 2021.
  6. ↑ "Regulations under the PCT: Rule 64 Prior Art for International Preliminary Examination". WIPO. Archived from the original on 29 December 2021. Retrieved 29 December 2021.
  7. 1 2 "Finding Technology Using Patents - An Introduction" (PDF). WIPO. 2015. Archived (PDF) from the original on 7 January 2022. Retrieved 29 December 2021.
  8. 1 2 "WIPO Guide to Using Patent Information" (PDF). WIPO. 2015. Archived (PDF) from the original on 22 December 2021. Retrieved 29 December 2021.
  9. 1 2 "Alternatives in Patent Search and Examination" (PDF). WIPO. 2014. Archived (PDF) from the original on 20 January 2022. Retrieved 29 December 2021.
  10. 1 2 "Handbook on Industrial Property Information and Documentation: Standard St.14 Recommendation For The Inclusion Of References Cited In Patent Documents" (PDF). WIPO. March 2016. Retrieved 29 December 2021.
  11. ↑ Ruiz, Manuel (October 2002). "The International Debate On Traditional Knowledge As Prior Art In The Patent System: Issues And Options For Developing Countries" (PDF). Centre for International Environmental Law. Archived (PDF) from the original on 20 January 2022. Retrieved 29 December 2021.
  12. ↑ European Commission, Executive Agency for Small and Medium-sized Enterprises, Non-disclosure agreement : a business tool, Publications Office, 2021, doi : 10.2826/547286
  13. ↑ 35 U.S.C.   § 102
  14. ↑ Article 54 EPC "Novelty"
  15. ↑ Japan Patent Act, Chapter II
  16. ↑ Article 56 EPC "Inventive step"
  17. ↑ Brinckerhoff, Courtenay (October 20, 2011). "The Disharmonious Loss Of The Hilmer Doctrine". Patent Law Practice Center. Practising Law Institute. Archived from the original on May 30, 2023.
  18. ↑ Graham v. John Deere Co. of Kansas City Archived 2017-04-24 at the Wayback Machine , 383 US 1, Sup. Ct., 1966.
  19. ↑ Tokai Corp. v. Easton Enterprises, Inc., 632 F. 3d 1358 at 1363-64, Ct. App. (Fed. Cir.), 2011.
  20. ↑ "Mark Nowotarski, "Why Inventors Should Not Rely On Their Own Search", IPWatchdog, 11 October 2014". Archived from the original on 9 January 2015. Retrieved 13 October 2014.
  21. ↑ USPTO, Manual of Patent Examining Procedure Archived 2011-09-26 at the Wayback Machine , "General Search Guidelines [R-3] - 900 Prior Art, Classification, and Search", July 2010.
  22. ↑ Nowotarski, Mark (July 2012). "Patent Invalidity Search". Insurance IP Bulletin. Retrieved March 1, 2013.
  23. ↑ All Things Pros blog Archived 2015-04-02 at the Wayback Machine , Board decisions involving the Wayback Machine to show status as prior art (Part I), Sunday, December 29, 2013
  24. ↑ The Wayback Machine: The State of Dating Online Materials Archived 2015-04-02 at the Wayback Machine , Intellogist patent research blog, Posted February 1, 2011 by Chris Jagalla
  25. ↑ Therasense, Inc. v. Becton, Dickinson and Co. Archived 2015-05-14 at the Wayback Machine , 649 F. 3d 1276, Ct. App. (Fed. Cir.), 2011.
  26. ↑ Patent e-Bulletin, Summer '2002 Developments: Following The United States, Japan And Australia Enact Duty Of Disclosure Requirements, Gastle & Associates (through archive.org)
  27. ↑ See also Japan's Examination Guidelines for Patent and Utility Model in Japan Archived 2012-02-04 at the Wayback Machine , Examination Standards Office, December 2011; and Japan's Right Obtainment Procedures Archived 2012-02-04 at the Wayback Machine .
  28. ↑ Japan Patent Office, Publication of the "Examination Guidelines on Requirement for Disclosure of Information on Prior Art Documents" Archived 2012-04-19 at the Wayback Machine , Last updated 30 August 2002.
  29. ↑ Australian Patent Office Manual of Practice and Procedure, 2.13.10 Considering Subsection 45(3) Search Results, 2011-08-15.; see also Changes to regulations made under sections of the Patents Act 1990, (sections 27(1), 45(3) and 101D) Australian Official Journal of Patents, 2007-11-01.
  30. ↑ Office of the Chief Information Officer, Secure Application Development Coding Policy OCIO [ permanent dead link ], USPTO, May 22, 2009.
  31. 1 2 USPTO Bans Wikipedia Archived 2007-05-07 at the Wayback Machine , The Patent Librarian's Notebook, 2006-09-10, citing Stead, Deborah, Up Front: Kicking Wiki Out Of The Patent Office, Bloomberg Business Week, 2006-09-04.

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