The Basics – What is Prior Art? (Part 1)

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The Basics – What is Prior Art? (Part 1)

What Does “Prior Art” Mean and Why Does It Matter?

When it comes to obtaining a patent, conflicts with prior art – evidence that your invention is already known – are one of the biggest hurdles.  At first prior art may seem quite clear.  However as is the case with many things related to intellectual property, things are not always as they seem.


In intellectual property law, the term “prior art” is used to describe evidence that the invention under review is not new; that it already known or exists in the public domain.  To obtain a patent, the invention described in the patent application cannot be either the same as the prior art or obvious in light of the prior art.  This is what makes defining the “prior art” so important when it comes to patents.


How is prior art defined?  While there are dates and nuances that we can dig into in another blog post, generally speaking prior art is defined as that which was (1) known or used by others or (2) was patented or described in a printed publication anywhere in the world when the patent application was filed.


Pretty simple, right?  Not so…


There are two keys to this description, the first of which is in the phrase “…known or used by others…”.  Here, “other” means someone other than the inventor.  This does not necessarily mean that the invention has to be widely known. In fact, in some cases, a single person who is aware of your invention can qualify as “other”.   Yikes.


A Single “Other” Creates Prior Art


An example of this is the case of Rosaire v Baroid from 1955.  A field trial was conducted to evaluate a method of prospecting for oil.  The trial was conducted by a single engineer, for research.  It was done in a relatively remote environment, without fanfare or announcement.  The trial was ultimately abandoned, no results were ever published, and nothing became of his work.  A later inventor applied for a patent on the same method utilized by the earlier engineer.  The field trial was conducted in a rural environment, with no one really having seen it or tracked its progress.  No products were sold because of it.  Does it mean that the invention was not “known or used by others” and therefore the field trial does not constitute “prior art” and does not conflict with the later patent application?


  1. In fact, it does not.  In this case even the single engineer, in the field of oil prospecting, was considered enough to satisfy as an “other”.  It was knowledge he had and although he didn’t publish his knowledge, he made no affirmative attempt to keep it a secret.  He was simply conducting normal business with no intention to try to keep his work a secret.  Therefore, the field trial qualified as prior art and the later patent application was deemed invalid as the claim was not “novel.”

Published or Patented

The second key to the description of prior art is having been patented or, “…described in a printed publication.”  Again, that sounds pretty straight forward, but can be more complex than it first seems.


A printed publication would ordinarily be considered a research journal article or a magazine article – something that is published and shared with the public in print.  But since when in law do words have an ordinary meaning?  Under the law, “printed publication” carries a broader meaning.  Here, it means anything that is publicly accessible.  This broader definition can make all the difference when it comes to getting a patent.


The legal definition of “printed publication” broadens the scope to anything appearing in the public domain.  It could be something posted on the web or shown in a television show.  It could be an advertisement.  It could be an interview in an industry magazine.  It could be a slide presentation.  Anything that is publicly accessible is available for a person having ordinary skill ithe art (PHOSITA, the fictional judge of patentability created by the law), to use as a “printed publication” and, thus, is “prior art”.  That may be a little broad but the intent is to startle you a little bit.  While there are exceptions and limits on this scope, for practical purposes it is best to think of the scope of “printed publication” this way.


An example?

In the In re Klopfenstein case from 2004, a poster presentation given to a meeting of the American Association of Cereal Chemists was enough to qualify as a “printed publication”.  This was a simple poster presentation – not a podium talk, and not a fully published paper.  It was only shared at a single meeting.  Copies of the poster presentation were not shared or distributed to attendees of the event.  However, since it was a presentation directed precisely to people skilled in the art at this particular meeting, it was possible for those having ordinary skill in this field to access and reference to the information in the poster, making it “prior art.”


Why We’re Discussing This


Does your company ever post or present webinars to share new data with your customers or potential new clients?  Do you have representatives that speak at industry conferences?  Are copies of your presentations ever posted to event sites or shared with event attendees?  Does your marketing team create new brochures and marketing materials to announce fantastic new data or to share how your technology differentiates itself from your competitors?


It can be very easy to find upon filing your patent application, that you have created your own prior art by allowing a piece of information that is part of your innovation to escape prior to filing.  In a company’s excitement to share their expertise, it can be easy to let something slip that becomes available in the public domain.  If it is in the public domain, and it is part of a claim in your invention, a patent examiner will find it while performing a prior art search to evaluate the novelty of your invention.  The examiner will assume that any person having ordinary skill in that particular area can also find it; and if they can find it, the assumption is that they know about it.  And if there is an “other” that has access to the “printed publication”, your claims can be invalidated because of existing prior art.


Be wary.  Conduct internal training with your employees across departments.  Make young scientists and members of your research team aware of the value of intellectual property.  Have a system of review in place for materials that are used in public settings.  Your company intel may have value; be cognizant of what you share.  There are enough obstacles to monetizing intellectual property.  There is no need to create your own.


We will be talking more about “prior art” soon.  This is one of the key (and most complex) concepts in patent law.  Hopefully this article provides a helpful reminder to always watch out for what you or your organization is saying, as it can come back to haunt you later if you are not careful.