The most important place for further prior art searching is the

worldwide patent system. Some patent databases - including the

What is prior art? European Patent Office's free database Espacenet - contain 90 million
documents, collected and indexed over many years by patent offices in
many countries.

Prior art is any evidence that your invention is already known.

Thanks to the internet, and to the international classification systems
used to organise inventions by subject, it is quite easy for inventors to
Prior art does not need to exist physically or be commercially
do their own patent searching. We describe how to do this later.
available. It is enough that someone, somewhere, sometime previously
has described or shown or made something that contains a use of
Competing art
technology that is very similar to your invention.
While looking for prior art, you should also look for competing art.
These are ideas that may not be at all like yours but do the same job.
A prehistoric cave painting can be prior art. A piece of technology that
It is important to study competing art for two reasons:
is centuries old can be prior art. A previously described idea that
cannot possibly work can be prior art. Anything can be prior art.
 Most inventions are a solution to a problem, and most
problems have more than one possible solution. You need to
An existing product is the most obvious form of prior art. This can
examine other solutions, as some may offer more advantages than
lead many inventors to make a common mistake: just because they
yours.
cannot find a product containing their invention for sale in any shops,
they assume that their invention must be novel.
WHAT IS PRIOR ART?
The reality is very different. Many inventions never become
September 7, 2017
products, yet there may be evidence of them somewhere. That
By Michael Henry
evidence - whatever form it may take - will be prior art. One of the most common reasons the USPTO gives for rejecting
claims in patent applications is prior art. Prior art can be used to
There are no accurate statistics, but some experts estimate that for show that your invention is not “new” or “non-obvious” — and these
are two of the most important requirements that determine whether
every recorded invention that eventually reaches the market, ten never
your invention is patentable.
will. This means that if you want to find out if your invention is novel, That’s why it’s important to understand what counts as relevant
you should indeed search products past and present - but you should prior art, and how that can affect your patent application.
also search much further.
WHAT’S THE DEFINITION OF PRIOR
ART?
Technically speaking, what is considered prior art under U.S. law is
defined by federal statute 35 U.S.C. 102, which was most recently
amended by the America Invents Act (AIA) — changes to the
definition of prior art took effect in March 2013.
In simpler terms: Prior art is any evidence that your invention
was already publicly known or available, in whole or in part,
before the effective filing date of your patent application.
Nevertheless, that’s still a fairly broad concept. To better pin down
what prior art is (and isn’t!), let’s take a deep dive into several
specific examples.
WHAT COUNTS AS PRIOR ART?
Many people make the mistake of assuming that prior art is limited
to either existing products or issued patents. In other words, they
believe (wrongly) that they’re entitled to a patent for an invention
simply because that invention hasn’t been patented or
implemented in a product yet.
But the range of information that counts as prior art is much
broader than issued patents and commercial
products. Generally speaking, prior art arises when someone has
either made an idea available to the public, or filed a patent
application that was eventually published or issued as a patent.
To list some common examples, prior art can include the following:

1. A product that was available for sale

2. Commercial use of the invention
3. Articles, publications, or journals (printed or electronic)
4. Presentation at a public event (a trade show, conference, etc.)
5. Public knowledge or use of the invention (e.g. demonstration)
6. A previously-filed patent application (assuming the previous
application eventually becomes a published application or an
issued patent)
What examples 1-5 have in common: They were publicly
available or publicly disclosed. It doesn’t matter whether the
information is broadly accessible on the internet — factors like
target audience, language, number of copies made, and
geographic location are irrelevant for publications. To use an
unlikely example, a high school textbook published only in
Kazakhstan could still count as prior art.
Additionally, the information must have been publicly disclosed or
publicly available before the effective filing date of your patent
application. If your effective filing date is Sept. 1, 2017, then a
magazine article published on Aug. 31, 2017, counts as prior art —
as does an expired patent from 1950. However, provided you filed
on Sept. 1, a demonstration of your product in October 2017 won’t
qualify as prior art.
Example 6 above is slightly different from the other examples
though, because a previously-filed patent application might not be
publicly available or publicly disclosed at the time you file your
patent application. Patent applications typically remain secret for
months or even years before they become public (as a published
application or an issued patent).
But a previously-filed patent application can qualify as prior art
even if it becomes public only after your application is filed. So for
example, if your effective filing date is Sept. 1, 2017, another
patent application that was filed on Aug. 31, 2017 counts as prior
art — even if it’s not published for several years.
WHAT DOESN’T COUNT AS PRIOR
ART?
Information that becomes publicly disclosed or publicly available
only after your application’s filing date generally doesn’t qualify as
prior art. Similarly, patent applications filed after yours generally
don’t qualify as prior art.
Here are four other notable exceptions to the examples provided
above.
1. PUBLICATIONS THAT DON’T PROVIDE
ENABLING DETAIL
For a publication to be used to reject your claims for lacking
novelty, it must disclose the invention with sufficient detail — that
is, it must offer an “enabling disclosure." Put another way, if
someone with ordinary skill in the relevant field of technology
cannot figure out how to make and use the invention from the prior
disclosure, then it can’t be used as the basis for a Section 102
rejection.
Let’s say you figure out how to build Iron Man’s suit and want to
patent it. The comic books and movies themselves can't be used to
show that your claims lack novelty, because although they explain
what the suit does, they don’t provide enough information to enable
the average skilled person to build the suit.
Keep in mind though that non-enabling prior art can be used to
show that your invention is obvious.
2. ABANDONED, SECRET PATENT
APPLICATIONS
Under certain circumstances, abandoned patent applications may
remain confidential, disqualifying them as prior art. For
one, provisional patent applications that aren’t converted to non-
provisional applications are never published.
By default, non-provisional applications are published 18 months
from filing. However, an application will not be published if the
applicant abandons it more than four weeks before it’s due to be
published.
Alternatively, if the application was filed only in the United States,
the applicant can request non-publication — in which case the
application will not be published unless and until a patent is
granted.
3. TRADE SECRETS
As trade secrets are confidential by nature, they cannot be used as
evidence of prior art. So another company’s trade secret invention
typically couldn’t be used as prior art against your patent
application, even if the other company developed their trade secret
before you independently developed the same invention.
4. CONFIDENTIAL DISCLOSURES
Even though it’s not advisable, in reality technology companies
often need to disclose their work to third parties before they file a
patent application — reasons to do this include gauging market
interest, pursuing funding opportunities, and developing
collaborations with other groups.
When information is shared with third parties under an obligation of
confidentiality, the disclosure doesn’t count as prior art against
your patent application. The best way to ensure that a disclosure
will be considered confidential to have all parties sign a non-
disclosure agreement (NDA).
WHAT HAPPENS IF I DISCOVER PRIOR
ART?
There’s always going to be prior art for any invention. In the words
attributed to a famous federal judge, “Only God works from
nothing. Man must work with old elements." Patentability doesn’t
hinge on the existence of prior art. Instead, whether your
invention is patentable depends on how different your
invention is from the prior art.
There are two criteria for patentability over prior art. First, the
invention must be new (or “novel” in the words of the statute) —
which generally means it can’t be identical to any single product or
reference. Quite simply, this prevents you from patenting ideas that defence to patent infringement in the US, they are still subject to
already exist in the public sphere or in previously-filed patent
applications. significant restrictions.
But at the next level, your invention needs to be inventive (or “non-
obvious” in the words of the statute) — that is, more than a trivial
variation of prior art. That means an invention typically can’t be WHAT ARE PRIOR USER RIGHTS?
patented if a person of ordinary skill in the relevant field of
technology could derive the invention from the prior art by making In general, prior user rights recognise that, in many jurisdictions, your
obvious changes or substitutions.
It’s also important to inform the patent office if you know of any own secret use of technology cannot be used to challenge another
prior art that’s material to the patentability of the invention claimed
party's patent claiming that technology. Prior user rights may provide you
in your patent application. Specifically, all inventors (and anyone
substantively involved with a patent application) have a duty of with a defence to patent infringement. The defence is limited to your
disclosure, candor, and good faith in dealing with the patent office.
Complying with this obligation is often easy, as the patent office ongoing use of technology that you used in secret before the other party
provides a specific procedure for telling them about any relevant
prior art. filed their patent application. If the technology was made public before the

HOW CAN I AVOID UNEXPECTED other party filed their patent application, then that would be novelty-
PRIOR ART? destroying and prior user rights are not relevant.
In many cases, determining whether something qualifies as prior
art and whether your invention is patentable over prior art can
require relatively technical analysis. If you’re looking to move PRIOR USER RIGHTS BENEFIT THOSE WHO
forward with a patent application, consider engaging a patent RELY ON TRADE SECRETS
attorney who’s familiar with your industry. A skilled attorney will
be able to tell you the options for dealing with known prior art Protecting your new technology using intellectual property rights often
for your specific circumstance.
But there's always a possibility that you'll encounter unexpected requires a choice between trade secrets and patents. The value of trade
prior art — or even accidentally create prior art against yourself!
Our FREE eBook, "Prior Art and the Patent Process," discusses secret technology is much reduced or even lost if another person
smart strategies you can employ to minimize those risks.
independently develops the technology.
Download it now!

Prior user rights

If another party obtains a granted patent encompassing your technology,

they have the right to exclude others from using it. This right to exclude
The AIA has made substantial changes to prior user rights in the US.

While the AIA has expanded the scope of prior user rights, which are a
potentially applies to you. If you chose not to pursue patent protection The prior use must have been at least one year before the patent's

you may, instead, face patent infringement proceedings! filing date

Prior user rights aim to mitigate the perceived unfairness of this situation. The commercial use must have occurred in the United States at least one

year before the relevant date, which is the earlier of:

PRIOR USER RIGHTS IN THE UNITED STATES

The rights apply to all subject matter  the effective filing date of the patent, and

 the first disclosure of the invention by (or derived from) the patent
The prior user rights in the AIA now apply to all patentable subject matter. owner.
Previously, they applied only to business method patents.

This latter date links to the new general grace period provision in the AIA
The prior use must be commercial and in the United States for such disclosures.

To acquire prior user rights, you must have commercially used the The defence applies to patents granted after 16 September 2011
technology in the United States.

The defence is available against patents that granted on or after 16

Commercial use includes both commercial use within your organisation September 2011.
and arm's length sale or transfer of the end result of the use. Commercial

use also includes: The defence is subject to several significant restrictions

 commercial marketing or use that is subject to a premarketing Prior user rights are personal

regulatory review, and

 use by nonprofit entities - such as research laboratories,

universities, and hospitals - for public benefit.

Prior user rights are restricted to the person or the commercial entity that Prior user rights apply only to the technology that was commercially used

performed the prior commercial use. That person can continue their use before the relevant date. The prior user rights may, therefore, only apply

of the technology and can vary the volume and/or quantity of that use. against some claims of the patent. Improvements or variations made after

that date may still infringe the patent.

The AIA clearly aims to restrict transfers of prior user rights.

The commercial use must be reasonably continuous

Prior user rights cannot generally be licensed, assigned or transferred.

An exception is where the prior user rights are transferred in good faith to You cannot acquire prior user rights from your prior commercial use that

another entity as part of the entire business. you started before the relevant date, but subsequently stopped.

Transferred prior user rights are geographically limited The defence is not available against all US patents

Where prior user rights have been legitimately transferred, then the new The prior user rights defence does not apply if the patent claims an

owner can only move the site of the commercial use if they do so before invention that, at the time of invention, was owned by a university or a

the patent application has been filed. university technology transfer organisation. This restriction does not

apply, however, where there is a prohibition on government funding of the

This restriction creates a practical difficulty. The new owner is unlikely to invention, for example inventions involving human embryonic stem cells.
know whether a patent application covering the technology has been

filed. The new owner may, therefore, unintentionally give up their prior The defendant has the burden of establishing prior user rights

user rights.
If you rely on the prior user rights defence, you must provide clear and

Prior user rights may not apply to improvements convincing evidence - the highest standard of proof used in civil litigation

in the United States.

Laboratory notebooks, for example, will likely continue to be very

important for activities in the United States - not to establish the date of

invention, but as evidence of prior user rights acquired in the

development of new commercial products. Important information includes

both the location, and the continuity, of the prior commercial use.

There may be unintended consequences

If you fail in an attempt to rely on prior user rights, you will face an award

of the patent owner's attorney fees unless you can demonstrate a

reasonable basis for relying on the defence.

The high standard of proof required means that you should only rely on

prior user rights if you have clear evidence of your own prior use.

Otherwise, your own evidence may not establish your prior user rights but

may satisfy the lower standard of proof required for patent infringement!