What is Considered as a “Prior Art” When applying for a Patent?

What Exactly is Prior Art?

Prior art is any evidence or proof (written or oral) that your invention was known prior to the effective date of the filing of a patent application or prior to the date of invention.

It is examined by examiners as part of the patent granting process to demonstrate that the invention is novel, non-obvious, and useful—the three most important criteria for obtaining patent rights. Patent rights cannot be granted if the invention is not novel, non-useful, and obvious.

1. According to US law, 35 U.S.C. 102, an applicant cannot obtain patent rights if “The claimed invention was patented, described in a printed publication, or was in public use, sale, or otherwise accessible to the public prior to the claimed invention’s effective filing date.”
2. According to 35 U.S.C. 103, an applicant will be denied patent rights if “The claimed invention differs from the prior art in such a way that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the claimed invention.”

What Qualifies as a Prior Art?

Most people believe that prior art is limited to existing products and patents that have been granted. But, on the other hand, it is not limited to products and granted patents, but any document in the public domain, whether it is a granted patent, a patent application, or a non-patent reference that existed on or before the current day when the search is performed or the effective filing date that covers the major elements of the invention, is considered prior art.

It can include a presentation at a public event, such as a conference; use of the invention, for example, a demonstration; a previously filed patent application; research papers, thesis, standards, white papers, e-mails, conversations, newsletters, products, articles, videos, blogposts, any internet publications, and so on.

Where Should I Look for Prior Art?

Various paid and/or unpaid databases can be used to identify prior art (patent/non-patent citations). Orbit Intelligence, Derwent, XLSCOUT Novelty Checker, Patsnap, Lens.org, Google patents, Google, IEEE, Google Scholar, IETF standards, Espacenet, J-PlatPat, CNIPA, and others are examples of popular databases.

There are several ways to search for prior art, depending on the database. An automated search, for instance, XLSCOUT’s AI-based Novelty Checker, in which either the inventive statement or the drafted claim components are entered, and an artificial intelligence module takes over from there to identify all the closest possible prior arts, would be one method.

We can also look for related prior arts that are cited on a previously identified relevant prior art. Furthermore, each of these databases has its own methods for creating search strategies.

Moreover, if the client already has some patents published on the same technology, those citations can be identified and used to guide the search to find the closest possible prior art.

What does not Qualify as Prior Art?

• Any information or patent application that is publicly revealed after the filing date of your application
• A publication that does not provides an “enabling disclosure“
• Some abandoned patent applications that are treated with confidentiality. Some provisional patent applications, for example, that are not converted to non-provisional applications, are never published and thus are not publicly available
• Trade secrets, since they are confidential
• Information shared under a confidentiality obligation, such as by signing a non-disclosure agreement, confidential disclosures or documents

What to do if you come across Prior Art?

There is always prior art for every invention. However, the grant of your patent application is dependent on the difference between your invention and the existing prior art. As previously stated, there are three main criteria for granting patent applications. First, the invention must be novel. Second, your invention must be original (or “not obvious”). Third, the invention should be useful. It is the applicant’s responsibility to notify the patent office of any known prior art.

However, if a search analysis uncovers prior art or citations similar to the invention, or if a question arises on the obviousness of the invention, the inventor needs to change or amend his invention.

Competing Prior Arts 

We understand that inventions are solutions to current problems, and that a single problem can have multiple solutions. These documents, which contain the solution to your invention, serve as competing prior art and may have a significant impact on the modification of your own invention to make it novel or new.

How does XLSCOUT assists in Quality Prior Art Searches?

XLSCOUT put the use of reinforcement learning to its AI-based Novelty Checker tool to get quality prior art search reports in just 10 minutes. The Novelty Checker uses reinforcement learning to filter the noise from the prior art by pulling up the relevant results on top of the list. To be precise, it assists in conducting a novelty search to help you ensure that your innovation is unique. By selecting a few relevant and non-relevant results, users can apply reinforcement learning to the result set. The system takes the user’s feedback and then learns from it. Then it re-ranks the results by bringing the quality results to the top and sending the noise to the bottom.

Without reinforcement learning, users go through hundreds of results manually. By applying reinforcement learning, users can skip going through the non-relevant results. Users can apply reinforcement multiple times to a result set according to their different requirements/ criteria. They can then view the Top-10 or Top-20 results for each criterion to perform an analysis for idea validation.

Users can quickly generate an automated novelty and patentability search report by selecting these Top-10 or 20 results. Search reports from Novelty Checker include a good list of results. In addition, key features of the invention are mapped with relevant text to facilitate quick decision making.