Patent It Yourself - PDF Archive

104 | Patent it YOURSELF
d. Specifics of Prior Art
Now that we’ve broadly defined prior art, let’s take a closer
look at what it typically consists of, per 35 USC 102.
i. Prior Printed Publications Anywhere
Any printed publication, written by anyone, and from
anywhere in the world, in any language, is considered
valid prior art if it was published either (a) before your
earliest provable date of invention (see above), or (b) over
one year before you file your patent application. The term
“printed publication” thus includes U.S. and foreign patents,
published U.S. patent applications (effective as of their filing
date), books, magazines (including trade and professional
journals), Russian (or former U.S.S.R.) Inventor’s
Certificates, and publicly available technical papers and
abstracts. Even photocopied theses, provided they were
made publicly available by putting them in a college library,
will constitute prior art. The PTO has even used old Dick
Tracy comic strips showing a wristwatch radio as prior art!
Tip
Computer Tip. While the statute speaks of
“printed” publications, I’m sure that information on computerinformation
utilities or networks would be considered a
printed publication, provided it was publicly available.
The “prior printed publications” category is the most
important category of prior art and will generally constitute
most of the prior art that you’ll encounter. And most of
the prior printed publications that the PTO refers to (cites)
when it’s processing your application, and that you will
encounter in your search, will be patents, mainly U.S. patents.
ii. U.S. Patents Filed by Others Prior to
Your Invention’s Conception
Any U.S. patent that has a filing date (or claims priority of a
PPA that has a filing date) earlier than your earliest provable
date of invention is considered valid prior art. This is so
even if the patent issues after you file your application. For
example, suppose you conceive of your invention 2010 June
9, and you file your patent application on 2010 August 9,
two months later. Then, six months after your filing date,
on 2011 February 9, a patent to Goldberger issues that
shows all or part of your invention. If Goldberger’s patent
was any other type of publication, it wouldn’t be prior art
to your application since it was published after your filing
date. However assume that Goldberger’s patent application
was filed on 2010 June 8, one day earlier than your date of
conception. Under Section 102(e) of the patent laws, the
PTO must consider the Goldberger patent as prior art to
your application, since Goldberger’s application was filed
prior to your invention’s date of conception. If a patent
claims benefits of a PPA, then the PPA’s filing date is
considered the effective prior-art date for the patent.
Tip
A Common Misconception is that only in-force
patents (that is, patents that haven’t yet expired) count as prior
art. This isn’t true. Any earlier patent, even if it was issued 150
years ago and has long since expired, will constitute valid prior
art against an invention. Otherwise, patents would have a lesser
status than other publications.
iii. Prior Publicly Available Knowledge or
Use of the Invention in the U.S.
Even if there’s no written record of it, any public knowledge
of the invention, or use of it by you or others in the U.S.,
which existed or occurred either (a) before your earliest
provable date of invention, or (b) over one year before you
file your patent application, is valid prior art. For example,
an earlier heat-treating process used openly by a blacksmith
in a small town, although never published or widely known,
is a prior public use that will defeat your right to a patent
on a similar process. It has been held that allowing even
one person to use your invention without restriction will
constitute public use. With respect to public knowledge, an
example would be a talk at a publicly accessible technical
society. Recently, even a showing of a kaleidoscope without
restriction at a party with 30 attendees was held to be prior
public knowledge. Or as one writer commented, “Throw a
party and lose your patent rights!”
For still another example of a public use, suppose that
you invented a new type of paint and you use it to paint
your building in downtown San Francisco. You forget to file
a patent application and leave the paint on for 13 months:
It’s now too late to file a valid patent application since you’ve
used your invention publicly for over a year. Put another
way, your own invention would now be prior art against
any patent application you file. (But see the Experimental
Exception described below.)
This public-use-and-knowledge category of prior art is
almost never used by the PTO since they have no way of
uncovering it; they search only patents and other publications.
Occasionally, however, defendants (infringers) in patent
lawsuits happen to uncover a prior public use that they then
rely on to invalidate the patent.