What is Prior Art?

A Prior Art is everything that is already available in public before the inventor gets his/her patent application registered. This simply means that the invention was already available and is no longer considered as novel. It basically means any disclosure of the contents of a claim, prior to the application for patent. Since the main area that states the scope of the patent is the claims section, therefore, if the claims of the aspirant’s work is already stated somewhere else then, the work will no longer will be a subject on which patent can be granted. Another important note about prior art is that national patent laws provide various definitions of what constitutes prior art and in which situations, which may vary from one territorial rules to another. If examination reveals that an invention is not novel, the patent application is rejected. And even if the patent is granted, it can still be annulled by a court if the court finds that the invention wasn’t novel after all.

Prior Art Pre-requisites

So, to get a patent invalidated, the first step is to locate documents that can be considered as “prior art” against the patent’s claims. Now, the question arises so as what to consider as prior art and what not? The answer can be easily figured out by checking the following three major pre-requisite conditions.

  1. Patent application filing date: If the publication or disclosure of any of the novel claims stated by any inventor, is already found in the same manner in some existing published or valid publication, then the older one will be considered as prior art for the new application, and then the new application will no longer be suitable for patenting. Anything found similar to existing publication before the date of its filing, will count as prior art. It doesn’t matter how long before the day of its filing, that publication was made. It is important, however, that the publication date can be established with sufficient accuracy.
  2. Public availability: If any of the mentioned claims or its content is found to be publicly accessible even before the day of its filing, then it will be considered as a relevant prior art. Since this will ensure that the invention is already out among the people and is no longer novel in its terms, which makes it invalid for attaining patentability.
  3. Enabling disclosure: Another important perspective of public disclosure is to know whether the document enables an average skilled person to practice the invention as claimed. It is totally based on the inference that can be pulled out through clever use of language from the document. It may be possible that language may describe the basic idea behind the invention, but does not enable the skilled person to construct the invention completely. Well, if the document is able to educate a skilled person about the invention, then it will be considered as ‘enabling’ in nature, which makes it a prior art. Otherwise, if it is not understandable and unable to be performed by a skilled person, then it will not be considered as one, making it novel and non-obvious.

 Valid Prior Art Forms

Invalidating a particular invention begins with the very first step of searching for available literature that describe the invention in whole or in part. Since the invention has to be carried out on the basis of its claims, the prior art must anticipate same set of claims, either implicitly or explicitly, in the same composition to invalidate any invention. If so, the invention will no longer be novel over that prior art document. Such prior art documents are often referred to as “killer prior art”.

Now another question arises, for what must be considered as valid prior art and what not. Well, as stated any valid publication, public speech, or any inference of claims which are found similar, are considered as a valid prior art. To clear out the various forms in which it is generally considered as valid, let us understand the following most common ways to invalidate any invention.

  • Publications: Any patents, scientific publications, textbooks, newspapers, lectures, demonstrations, exhibitions and any other disclosure can be considered as prior art. It doesn’t depend on the language used, the targeted audience, the number of copies created, and whether any copies bought or read by third parties. All these instances constitute prior art, as long as a member of the public could gain access to it without violating a secrecy obligation or doing something illegal.
  • Publicly available products: If any related products that includes same consistency of same substances or chemicals then it will also be taken as prior art. Considering the fact that it is very difficult to determine exactly what the product is made of or how it works. While if the product is not sold and is only demonstrated to the public, then only those features which the public could observe count as prior art. But if the use was under the inventor’s control, the invention was not publicly used, therefore creating an unfavorable condition for prior art.
  • Non-disclosure agreements: In case, the inventor might want to disclose his invention to a third party before filing a patent application, for evaluating the commercial value or to get help in developing a prototype. If everything has been done in confidence, then it will not be counted as prior art. A written non-disclosure agreement (NDA), signed by both parties would serve the best in maintaining confidentiality of discussion. While any proofs found out in public about the invention in lack of confidentiality of its disclosure, will be considered as a relevant prior art.
  • Oral disclosures: Any statement made orally, such as lectures or non-confidential discussions between the inventor and a third party, usually also count as prior art. In some cases a transcript or recording (if available) serves as a proof or prior art. Note that the transcript itself also counts as prior art from the day it was published. Thus, if the patent application was filed after the publication of the transcript, it may be easier to use the transcript as prior art than to use the transcript as evidence of an earlier oral disclosure.

 After reading the complete article, you must be now well aware of the fact that how important an invalidity search is. Well, here’s where we come to help you out. We at The Patent Search Firm helps our clients in taking precise IP and business decisions about filing a patent application, defending a patent litigation, or directing R&D towards market leadership.

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