What an IP coordinator should know: The prior art wall

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As part of our ongoing series examining the ecosystem necessary to bring technology to market, David French, a senior Canadian patent attorney with 35 years of experience, now provides a further of his commentaries on the importance to a company of protecting its Intellectual Property.

By David French

In the last blog post in this series we identified how “loopholes” can seriously undermine the value of a patent. In an earlier post, we touched upon the novelty requirement for obtaining a patent. In this post, we address in greater detail the reality of the existence of prior art and its impact on potential patent coverage.

The Golden Rule of patent law is that a patent claim cannot take away from the public anything that was previously available to the public. That is, the claims of the patent, defining the exclusive rights of the owner, cannot describe or read on anything that existed previously. If they did, the patent could be asserted against something that was previously available. That is prohibited.

Since 1989 in Canada and as of March 16, 2013 in the U.S., the concept of “previously available to the public” establishes the novelty requirement for the granting of a valid patent right. The phrase “previously available to the public” refers to any information or disclosure occurring in any form whatsoever at any place throughout the world. This can be referred to as “absolute world novelty” or “absolute novelty” for short. On this basis, the prior art includes any disclosure that is made anywhere, whether in prior patent documents or otherwise. This is the standard for novelty applied in Europe and elsewhere in the world.

The effect of this absolute novelty rule is that, even if you were to make an invention which is truly meritorious and indeed brilliant, you cannot obtain a patent for those aspects of your invention which were already available to the public. Effectively, only “pristine” inventions can be patented. Consequently, it is appropriate, indeed essential, to conduct extensive searching amongst the prior art before you file your final patent application. There’s no point in filing an application for an invention which has already been disclosed publicly; the exercise would be futile. But there are several additional reasons for conducting searches of the prior art.

Unearthing opportunity

As you search for your invention you will find other instances where others have addressed the same problem. They will have proposed their own solutions and this can be a useful learning experience for an inventor. If a portion of your idea has already been disclosed, then a review of the prior art may show features that have been overlooked by others. This can lead to further inventing in the white space where patents might still be obtained.

A prior art search may find what looks like a knockout. However, some residual or additionally generated ideas may still qualify as being novel. In such case, a patent disclosure document can still be prepared. Advantageously, that document will be focused on concepts that have a real prospect of supporting a valid patent. This preferred procedure should be contrasted with the futility of generating many pages in a patent document discussing features which, once the prior art is known, can never support a valid patent grant. Searching can lead not only to better inventing, but also to better patent applications.

The need for a thorough pre-filing patent novelty search is of key importance. Yet it is a source of one of the major errors made by far too many patent applicants. When given the choice between having a $500 prefiling patent novelty search conducted by a discount search specialist, or having a $2,000 search done by competent professionals, too many inventor/applicants choose the cheaper alternative. This is a truly bad investment strategy. Far too often, such inventors will only discover the existence of damaging prior art three or four years later when it is too late to file a better drafted patent application. If they have put their remaining novel ideas on the market, or even disclosed them publicly, without first describing them in a patent application, then they may have terminated their right to obtain patent protection for such ideas.

Would you build a house on someone else’s property?

As the title above indicates, the prior art serves as a “wall” into which patent claims may not intrude. If patent claims are envisaged as a kind of fence that is erected to protect an exclusive territory, then it is forbidden for the fence to cross over the boundary or even contact the territory occupied by the prior art. It would be foolish to begin construction of a house without checking first whether there is a boundary or barrier which, if even the smallest portion of the house transgresses or violates the line, will result in your loss of ownership of the house. This is how patent claims work.

It is often heard that you should conduct a patent search before you file a patent application. This is somewhat true, but if you want to be particularly cautious with an especially valuable invention, then the right way to proceed is to file immediately, then conduct a full in-depth search, after which you file again. A cursory search can be made just before making the first filing. But when the in depth search comes in, a revised patent application can be prepared that focuses on the features which do not violate the integrity of the prior art wall.

The reason for filing an immediate application is that you get credit for what you disclose. You are thereafter sheltered from subsequent public disclosures by yourself and others. Under the system now recognized around the world you are entitled to file multiple additional patent applications for a period of one year from the first filing. After that, you must make one final patent filing wherein the “story” is frozen. As of that moment your entitlement to patent protection is predetermined, once all the facts are known.

David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of intellectual property. For more information visit www.SecondCounsel.com.

David French is available to lead a discussion group in Ottawa, a Quality Patenting Forum where people can discuss intellectual property issues relating to business startups. If you are interested in participating, please e-mail David.French@secondcounsel.com.

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