What Qualifies as “Prior Art” When Applying for a Patent?

August 23, 2022

“Prior art” (also known as background art or state of the art) is a term in patent law that is one of the most common reasons of rejection of patent application’s claims by the Patent Offices. Thus, it is very important to understand the term “prior art”, especially for the applicant of a patent.

What is a Prior Art?

Prior art is any proof or evidence in some form (written or oral) that shows that your invention is already known before the effective filing date of a patent application or prior to the date of the invention.

Prior arts are analysed by examiner as a part of patent granting process to show that the invention is novel and non-obvious which are the two most important criterions for getting patent rights. As per US patent laws, patent rights cannot be given if the invention is not novel or is obvious.

As per US law 35 U.S.C. 102, an applicant cannot get the patent rights if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention”.
As per 35 U.S.C. 103, an applicant cannot get the patent rights if “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”

What Qualifies as a Prior Art?

Most of the people think that prior art is restricted to only existing products and granted patents. On the contrary, the prior art is not limited to only products and granted patents, but any document which is in the public domain, be it a granted patent, a patent application or a non-patent reference existing on or before the present day when the search is conducted or the effective filing date that covers the major aspects of the invention is considered as a prior art.

Prior art can include presentation at a public event e.g., conference, use of the invention e.g., demonstration, a previously filed patent application, research papers, thesis, standards, white papers, e-mails, conversations, newsletters, products, articles, videos, blogposts, any internet publications, etc. 

Where to Search for a Prior Art?

To identify prior arts (patent/non-patent citations), various paid and/or unpaid databases can be used. Few of those popular databases are: Orbit, Derwent, XLSCOUT, Patsnap, Lens.org, Google patents, Google, IEEE, Google scholar, IETF standards, 3GPP standards, ETSI, Espacenet, J-platpat, KIPRIS, CNIPA etc.  

Depending on the databases, there are numerous methods to search for prior arts. One method would include an automated search (for example in XLSCOUT – AI based module) where either the inventive paragraph or the drafted claim elements/features are entered, and an artificial intelligent module takes over from there to identify all the related/relevant/closest possible prior arts. 

Next, we can perform manual searches by making search strings/queries/strategies using all the important/related key words/phrases of the invention. These can further help us in identifying major assignees/inventors and/or important patent classifications related to the invention which can be used in forming further search strategies. 

We can also look for more related prior arts present/cited on an identified relevant prior art. Further, all these databases mostly have their own syntax/methods for making search strategies.  

Moreover, if client has already some patents/products/papers published on the same technology, then those references/citations can be identified and can help in steering the search accordingly, to find the closest possible prior art. 

What does not Qualify as a Prior Art?

Any information or patent application which is publicly disclosed after your application’s filing date doesn’t qualify as a relevant prior art.
For a publication to qualify as a prior art it must offer an “enabling disclosure.”
Some abandoned patent applications may remain confidential, and this cannot be used as prior art. For example, some provisional patent application which are not converted to non-provisional applications are never published and thus not available publicly. Such, applications cannot be used as a prior art.
Trade secrets are confidential by nature, and they cannot be used as evidence of prior art.
Confidential disclosures/documents cannot be used as prior art when information is shared under an obligation of confidentiality such as by signing a non-disclosure agreement (NDA).

What to do if you find a Prior Art?

“Only God works from nothing. Man must work with old elements.”- Chief Judge Markey viewed all inventions as combinations of old elements.

For every invention there’s always a prior art. But the grant of your patent application depends on the difference of your invention from the existing prior art. As mentioned already, there are two main criterions for granting patent application. First, the invention must be new (or “novel”). Second, your invention must be inventive (or “non-obvious”). It is the duty of the applicant to inform the patent office of any known prior arts.

However, if a prior art search analysis leads to prior arts or citations similalr to the invention or leading to obviousness of the invention or questioning the novelty of the invention; the inventor may have to change or amend his invention. 

Competing Prior Arts

We are aware that inventions are a solution to an existing problem and a single problem can have more than one possible solution. These documents contain the solution to your invention act as competing prior arts and these might be a major influence in amending your own invention for it to be novel/new. 

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