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Prior Art: How new?

How to use “Prior Art” to help you to decide to file in patent application.

You can determine how your invention is different from earlier inventions by conducting a “prior art search.” Inventions that come before your invention are referred to as “prior art” by patent attorneys. The differences between your invention and the prior art can be determined by comparing the invention and the prior art. A “prior art search” finds similar inventions. You and your patent attorney can analyze these inventions to determine the potentially new parts, functions, steps or combinations. The search can guide how, or if, the invention differs from the other, early inventions.
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These differences can show how the patent is new. The new portions of your invention are the portions that you may prevent your competition from doing after the patent issues.

This is important, so here it is again.

The new portions of your invention are the portions that you will eventually be able to prevent your competition from doing.

Searching at the Patent Office, in the U.S. and abroad

To compare the invention to the prior art, you need to first locate the prior art. A prior art search is typically performed by a patent attorney, a professional patent searcher, or sometimes both.

Prior arts searches are imperfect by nature. The searcher must identify keywords, patent classes, or combinations of both to identify related patent art. The searcher may consult with the U.S. Patent Office to aid in classification. The searcher can use proprietary databases, the identical search tools available to Examiners, or both.

The patent classification system used by the United States Patent Office and the International Class system may not always classify other patents that are pertinent to your invention within the classes searched. There are more than seven million issued United States patents and a quickly growing body of patent publications. Examiners classify these millions of documents in more than 100,000 classes. More than one thousand examiners may be involved in classifying and cross-referencing to other classifications. Examiners can have different opinions regarding proper classification. Patents may not contain the keywords that the searcher deems relevant to the invention. Some Examiners have developed personal libraries of favorite, non-patent technical literature. Some patents may be written in foreign languages. Finally, only published patent art may be searched. Patent applications remain secret until published. Even secret patent applications can be used to prevent your patent application if the secret application is eventually published.

Even with these limitations, patent searches are the best known way to determine the differences between your invention and the prior art. Your patent attorney can analyze your invention and the prior art to help you understand how your invention is new and different. Patent attorneys are trained to find small, important differences.

Do not underestimate your own ability to spot differences between your invention and the prior art. Your ability to determine the importance of these differences may be better than your patent attorney’s ability. This is because you know your customers, your industry, and your invention better than your patent attorney.

###Keep your friends close, enemies closer – How knowledge of your competition can help your analysis.

Before you conduct a prior art search, you may wish to spend some time researching your competition and any relevant technical literature. Many patent searches are limited to only patent prior art. Prior art searches that include the Internet, technical literature, and competitor publications can cost more than filing a patent application, when done by a patent attorney or professional searcher. Doing this yourself saves money and has other obvious benefits: knowing your competition, or potential competition. When you provide your patent attorney with additional information prior to the search, your patent attorney can consider this information when analyzing your invention. Some good places to search include:

Internet Search Engines


###Other sources

  • Technical literature at a nearby, large public or university library
  • Competitor’s product catalogues
  • Governmental filings of competitors
    • SEC filings
    • FDA filings
  • Manuals
  • Newspapers and Periodicals
  • Trade publications
  • Internet newsgroups

As a result, you may also find new competitors or competitive products. This information generally increases the quality of the patent search process and business plan.

Read the Prior Art Carefully; Find the Differences.

You should carefully read about the other inventions, including the prior art documents, technical literature, and any other information, and compare them to your invention. Note the differences.

###What is the effect of preventing competitors from acting on these differences?

Would prevent your competition from using these differences (or any new sub combination), give you a significant advantage? If so, the patent may worthwhile. If not, the patent may not be worthwhile. The resulting patent protection has the potential to be very strong, regardless if the claim is broad or narrow. For example, if the differences allow

  • cost savings
  • quality increases
  • unique value propositions
  • reduce risks
  • improve durability

then commercial importance may be obvious. In some circumstances, the differences can prevent the entire practice of the invention.

Shortcut: Another way to think about Prior Art

You can think about prior art another way. Try imagining that your competitor can do what is described in each of the prior art documents. Imagine that your competitor would be safe from your patent if your competitor only did what was described in the prior art. What would be the value of your patent?

Just so that you know, this method is useful for guidance, but you should discuss any concerns that arise from this method with your patent attorney. Most of the time, this gives great, easy guidance to potential patentability with little thought or effort. However, there are certain legal pitfalls that probably would be to your advantage. Said another way, this method may overestimate what your competition could actually do when faced with your patent.

Prior to Filing: the Secrecy Problem

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