AOP Community Resources

Prior Art

Overview

An invention may be deemed patentable if it is novel, non-obvious, and useful.  Failure to meet any one of these requirements would lead a patent examiner to reject one or more patent claims filed by an inventor in a patent application.  For example, the patent examiner may reject one or more claims in a patent application if the patent examiner found any references that disclosed the invention before the date that the application was filed.  These references are examples of “prior art,” meaning that they are literature describing the technology prior to the application.

The European Patent Office (EPO) defines prior art as, “any evidence that your invention is already known.  Prior art does not need to exist physically or be commercially available.  It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to your invention.”

Prior art can come in the form of a patent granted to a different entity or in the form of a printed publication in which the applicant was not an author or co-author.  In the case of an Article One Study, prior art is what the Researchers are trying to find and submit.  In order to be considered prior art, the submission needs to be dated before a specific date, known as the Latest Date for Responses.  The winning prior art submission is one that most closely describes the technology in the Study patent.

Prior Art Details

Particularly relevant for the purpose of a prior art search directed to a specific patent is the fact that the patent can be invalidated by one or more prior art references upon demonstrating the patented invention’s lack of novelty based on the newly-found prior art.  Again, these prior art references may include any US or non-US patent or any printed publication (filed or submitted by anyone other than the inventor) having a filing date or publication date that is at least one day earlier than the date of invention by the applicant.  Prior art may also include references dated more than one year before the date of filing of the application for patent by the inventor.

In some cases, newly-discovered prior art may not describe one or more features of an invention in exactly the same way as described by the inventor.  Still these prior art references may still be capable of invalidating a US patent if the differences between the invention described in the patent and that described by the prior art are such that the invention would have been rendered obvious to an expert in that field.

Examples of references that may constitute prior art include patents, published patent applications, web pages, presentations, files stored in an electronic medium (e.g., CD-ROM), newspaper or magazine articles, print or electronic journal articles, trade publications, industry or company newsletters, product manuals, product datasheets, product prototypes, video files, product labels, drug inserts, photographs, drawings, lecture notes, published or posted electronic documents, and other forms of publicly accessible references or materials that can be considered to have disclosed, described, taught, or suggested to the public the features of an invention, as delineated in the claims of the patent, before the date of invention or the date of filing of a patent application for the invention.

To determine whether or not a reference can be used as prior art, one needs to look at the patent claims to determine whether or not the individual features recited in a given claim have already been previously described, taught, or suggested in the prior art.  If the reference discloses the features of an invention as defined in the claim, that reference would render that particular patent claim invalid.  In the case wherein all of the previously allowed patent claims were eventually found to be invalid, one could say that the patent itself is invalid, rather than just the individual claims.