Prior art

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Patentability

Inventorship

Prior art
Person skilled in the art

In most patent laws, prior art or state of the art (the latter term sometimes has other meanings as well) is all information that has been made available to the public in any form before a given date. If an invention has been described in prior art, a patent on that invention is not valid.

Information kept secret, for instance as a trade secret, is not usually prior art. Generally, this means that a patent will be granted on the invention despite the fact that someone else 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 As a special exception, earlier filed and unpublished patent applications do qualify as prior art in certain circumstances.

In most patent laws, prior art is expected to provide a description sufficient to inform the average worker in the field (or the person skilled in the art) about the invention. Prior art must be available in some way to the public, and many countries require the information to be recorded in a fixed form somehow. Again, in most patent laws, prior art does not include unpublished work or mere conversations (though according to the European Patent Convention, oral disclosures also form prior art — see Article 54(2) EPC). It is disputed whether traditional knowledge (e.g. of medical properties of a certain plant) constitutes prior art.

The term "prior art" is mainly used in the patent field. 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. To assess the validity of a patent application, patent offices explore the prior art that was disclosed before the invention occurred (in the United States and all first-to-invent patent systems) or before the filing date (in Europe and all first-to-file patent systems).

1 First-to-invent systems
2 First-to-file systems
3 Other considerations
4 Prior art searching and novelty searches
5 Relevant art
6 References
7 See also
8 Further reading
9 External links

[edit] First-to-invent systems

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[edit] First-to-file systems

Main article: First to file and first to invent

Every country other than the United States uses a First-to-file system. This means that, regardless of who the first inventor was, the person or legal entity who files a patent application first is the one who can be granted a patent for the invention. The First-to-invent versus First-to-file rule is one of the major dichotomies between U.S. patent law and the patents laws of many other nations. As of this writing (2006), harmonization efforts are underway with the goal being to unify the patent laws of various nations so that inventors have the same rights regardless of in which country a patent is granted.

[edit] Other considerations

Although patents normally go to the first inventor under a first-to-file system, an inventor who keeps the information secret or just does not publish generally loses the right to the patent and also does not establish prior art. Without prior art, a later inventor can get a valid patent on the same invention and then apply it against earlier inventor(s). All this is easily prevented simply by recognizing the invention and applying for a patent, or by publishing details of how to practice the invention, thus creating prior art.

[edit] Prior art searching and novelty searches

Prior art searches or novelty searches are often conducted before filing a patent application or after filing to find one or more publications that predate the filing date of an issued patent or pending patent application. A prior art search helps an inventor determine if the invention is novel before committing the resources necessary to obtain a patent. This type of search is called a novelty search. Prior art searches may also be used to invalidate existing patents (these searches are called "validity searches" or "invalidity searches") by showing that the patent office erred in the issuance of a patent because the patent holder is not the first inventor.

Prior art searches are also useful to determine what a patent or patent application is really worth, before acquiring it or taking a license. If a publication predates the filing date of a patent application and discloses one or more features of an invention, then that publication is "material to the patentability of the claimed invention", and is considered to be prior art.

In the United States, inventors and their patent agents or attorneys are required by law to submit any prior art they are aware of to the United States Patent and Trademark Office so that the patent examiner can take the prior art into account when examining the patent application.

If prior art is discovered after a patent issues, it can be used to invalidate the patent. This can be done by a reexamination proceeding in the U.S., or an opposition proceeding in Europe or Japan.

Another type of patent search similar to a prior art search is a clearance search. A clearance search is done in order 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.

[edit] Relevant art

The United States Patent and Trademark Office (USPTO) refers to searching highly "relevant art" areas. ^[2] Relevant art includes current art whether prior or not.^[3] Patent attorneys recommend using the term relevant art for material that is not obviously in the public domain. Relevant art is preferred over prior art as not admitting that the material is "prior" when the priority of one or more patents has not been litigated.

More generally, patent attorneys usually speak of "relevant prior art" when they mean "prior art that completely describes the invention." This is a form of weasel wording. Saying the latter is an admission that the patent is invalid, whereas the former provides some leeway should the subject come up in a patent invalidity lawsuit.