AOP Community Resources

Known Prior Art

Known Prior Art Overview

Known Prior Art includes any piece of prior art relevant to the Study that has already been discovered, either through past searches or in the original application process.   If available, a list of Known Prior Art may be available on the Study page.  Because these references are already known, they are not accepted as submissions and will be marked as Declined.  However, these references can be extremely valuable in your search.

One of the best ways to start a prior art search is to investigate the Known Prior Art list. These references can help you understand the background of the Study and identify potential search terms.  In addition, they help to identify whether a reference you find might be relevant.

Patent Citations

The first type of Known Prior Art comes directly from the Study Patent.  Most patents provide a list of “References Cited,” which includes citations added to the patent during the application process.  These pieces display similar technologies that were identified by the inventor, applicant, or examiner.  Patent Citations can come in multiple forms, including US Patents, Foreign Patents, Search Reports, and Non-Patent Literature.  The lists are usually found on the first few pages of a patent.  This information is a great start as you try to learn everything about the Study technology.

The “References Cited” section of a patent is a gold mine of information, if you know how to use it correctly.  While these patents and documents cannot be submitted to the Study, don’t be afraid to examine the actual references to better understand exactly what makes this technology unique.  These documents were identified before the patent was granted, but they do not match the Study technology enough to prevent the patent from being granted.

The patent citations create standards against which Researchers can set their findings. Compared to these citations, the references you submit should be an even closer fit to the elements of the Study.  This provides an immediate benchmark for comparison before you choose a reference to submit.

Additional References

Article One often expands the Known Prior Art list in addition to the references cited in the Study patent.  These extra references surfaced in previous searches, often in preparation for the Study.  As a result, these lists are very important to consider in your searching.

Most Known Prior Art lists are posted as spreadsheets that include the bibliographic information for each document.  This allows you to locate the document and browse similar technology.  However, the Study may also post the actual documents or images.  This occurs if the document is critical to the understanding of the technology, or if it is difficult to locate.  This makes research even easier because any Researcher can quickly review these pieces of art to identify useful search terms and unique pieces of the technology.

Strategy & Tips

Every reference needs to be compared with the Known Prior Art list to ensure that it will not be declined. On the other hand, utilizing this information gives you an automatic head-start on the research process.  In fact, if you use these lists correctly, it could give you the edge needed to win the Study.  Here are a few tips to remember when reviewing the Known Prior Art list:

Identifying Technical Elements

A key step to a successful Study is to identify the most important elements on which to focus your search.  If the Study Description or the Study patent do not provide enough information, you can use the elements in the known prior art to better understand the unique aspects of that Study.  These references closely match the Study technology, but are not perfect matches.  Your goal is to determine which elements will help you find a better match.  Compare the elements in these references with the Study Description to eliminate the broader ideas and focus your research on the most important pieces of that Study.

Author Names

The authors of known prior art can help to expand your background knowledge and create new search leads.  If an expert has written an article about the technology in your Study, they (or their colleagues) may have written other relevant pieces as well.  Be sure to keep an eye for “Et. Al.” author names; this is an opportunity to find a longer list of relevant authors and their publications to use in your search.  Many experts also work in multiple technical fields, which can lead to evidence of this technology being used in a completely different industry.

Journal Titles

After reviewing the authors for documents cited, take a look at the title of the journal, book, or magazine in which they were cited or published.  Most of the time, non-patent literature is published as part of a larger piece of work. Taking the time to examine what else is in these publications may yield a plethora of potential references.  This can also help you to identify new resources to use for future search projects.

Varying the Types of Literature

While each Study may have its own requirements for the type of literature, the known prior art list can provide some key insights into the most important type.  If the known prior art primarily consists of US Patents, the USPTO database is a great place to begin your background research.  However, it means that the winning reference is less likely to be a US patent because patents have already been thoroughly searched.  In that case, it may be better to focus on academic journals that are represented on the known prior art list.  In a similar manner, any non-US references cited in the list can help you identify potential new locations for prior art around the world.