Identify Prior Art

Identify Prior Art

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It is essential to identify the “effective date” of a disclosure for purposes of determining whether the disclosure qualifies as prior art.  For patent documents, the easiest way to determine the effective date is by a quick review of the front cover thereof, which lists the filing date, publication date, the issue date if granted, and priority dates if available.

Simply put, a prior art search is a search for existing information that resembles the invention to be claimed.  A person is not entitled to patent protection for an invention that already exists and is known to the public.

35 U.S.C. § 102(a): What Constitutes Prior Art

102(a)(1)

A person is entitled to a patent unless: 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.^[1]35 U.S.C. § 102(a)(1).   Any prior art that falls under 35 U.S.C. 102(a)(1) need not be by “another” to constitute potentially available prior art.  For example, disclosures by the inventor, unless subject to an exception, may qualify as prior art in some situations.

Patented

A patent is prior art if it explicitly or inherently teaches the subject matter of the claimed invention and was issued in this or a foreign country prior to the effective date of the claimed invention.  The “effective date” of the patent for purposes of determining whether the patent qualifies as prior art is the grant date of the patent.  However, if the patent is secret as of the date the patent rights are awarded, the patent is available as prior art as of the date the patent was laid open for public inspection or disseminated in printed form.^[2]See, e.g., MPEP § 2152.02(a).

Printed Publication

A description in a published patent application or printed publication is prior art if it describes the claimed invention and was publicly available prior to the effective date of the claimed invention.  Two requirements must be met in order for a published patent application or printed publication to describe the claimed invention that is anticipated under 35 U.S.C. § 102(a)(1).  First, the published patent application or printed publication must describe, either explicitly or inherently, each and every element of the claimed invention, as well as the arrangement of said elements.  Second, the published patent application or printed publication must describe the claimed invention in such a manner that a skilled artisan would be able to make and use the claimed invention without undue experimentation.^[3]See, e.g., MPEP § 2152.02(b).  

Public Use

Public use of the claimed invention by the inventor or a third party qualifies as prior art.  While there is no geographic limitation on where prior public use may occur, i.e., public use of the claimed invention may occur anywhere in the world, such use must occur before the effective filing date of the claimed invention to constitute prior art under 35 U.S.C. § 102(a)(1).^[4]See, e.g., MPEP § 2152.02(c).

Sale

Sale activity qualifies as prior art where the claimed invention: (1) was the subject of a commercial sale or offer for sale, not primarily for experimental purposes; (2) was ready for patenting; and (3) was made available to the public by virtue of the sale.  As is the case for public use, there is no geographic limitation on where a sale or offer for sale may occur; however, such a sale or offer for sale must make the claimed invention available to the public before the effective date of the claimed invention in order to qualify as prior art under 35 U.S.C. § 102(a)(1).^[5]See, e.g., MPEP § 2152.02(d).

Otherwise Available to the Public

This is a “catchall” provision focusing on whether a disclosure somehow made the subject matter of a claimed invention “available to the public,” rather than on the specific form of the disclosure.  For instance, even if a disclosure does not qualify as a patent, published patent application, printed publication, a public use, a sale or offer for sale, a disclosure may nonetheless qualify as prior art provided that the claimed invention was made sufficiently available to the public.  Non-limiting Example of disclosures (e.g., documents or activities) that may make the subject matter of the claimed invention available to the public for purposes of 35 U.S.C. § 102(a)(1) include: a student thesis in a university library; a poster display or other information disseminated at a scientific meeting; subject matter in a laid-open patent application; a document electronically posted on the Internet; and a commercial transaction that does not constitute a sale under the Uniform Commercial Code.^[6]See, e.g., MPEP § 2152.02(e).  

102(a)(2)

A person is entitled to a patent unless: the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.^[7]35 U.S.C. § 102(a)(2).  

U.S. Patent Documents

U.S. patents and U.S. patent application publications qualify as 102(a)(2) prior art if: (1) they name another inventor; (2) explicitly or inherently teach the subject matter of the claimed invention; and (3) were effectively filed prior to the effective filing date of the claimed invention.  U.S. patents and U.S. patent applications that meet the aforementioned criteria are available as prior art as of their effective filing date.  Typically, 102(a)(2) prior art encompasses U.S. patent documents that have an effective filing data before the effective filing date of the claimed invention, yet have an issue or publication date after the effective filing date of the claimed invention.^[8]See, e.g., MPEP § 2154.01.

The effective filing date of U.S. patent documents again corresponds to the actual filing date of the documents, or the filing date of a prior application to which there is a priority or benefit claim.  A U.S. patent document may claim priority to a prior-filed application (e.g., a prior filed U.S. application, foreign application, and a PCT application) if the U.S. patent document: (1) contains a priority or benefit claim to the prior-filed application; (2) is filed within twelve months of the earlier filing; and (3) has a common inventor or is the same applicant.^[9]See, e.g., MPEP § 2154.01(b).

WIPO Applications

A published patent application filed pursuant to the Patent Cooperation Treaty (PCT) qualifies as 102(a)(2) prior art if: (1) it names another inventor; (2) explicitly or inherently teaches the subject matter of the claimed invention; (3) is effectively filed before the effective filing date of the claimed invention; and (4)  designates the U.S.  WIPO publications of PCT patent applications qualify as 102(a)(2) prior art regardless of whether they are published in English or enter the national stage in the United States.  The effective filing date of WIPO publications of PCT patent applications corresponds to the actual filing date of the patent application, or the filing date of a prior application to which there is a proper priority or benefit claim.^[10]See, e.g., MPEP § 2154.01(a)-(b).