What is Prior Art?

Note: Want to skip the guide and go straight to the free templates? No problem - scroll to the bottom.
Also note: This is not legal advice.

Introduction

Prior art is an integral component of the patent system and intellectual property protection, and entails all evidence of knowledge or technology that existed prior to an invention being made. It is not necessarily identical to the invention in order for it to be considered; it just needs to be similar enough that it could be viewed as a pre-existing idea or technology.

Prior art matters because it can determine whether an invention is eligible for patent protection. A patent search will assess whether prior art exists, in the form of published documents, products or methods, that would render a patent application void. In addition, if an existing patent is demonstrated to have been already known or used before filing - through prior art - then it can invalidate a claim and protect inventors from facing infringement claims.

Furthermore, prior art provides security for intellectual property rights; demonstrating ownership and preventing unauthorized use of someone’s ideas or creations. For example, Genie AI – founded in 2017 – offers free legal document templates via its open source library that millions of data points inform on what market-standard prior art looks like. This makes accessing high quality legal documents possible without needing legal counsel while still affording adequate protection for IP rights - no Genie AI subscription required!

Given its key role in patents and intellectual property security, being knowledgeable on the importance of prior art and conducting necessary searches is incredibly valuable to inventors and their lawyers alike. Here at Genie AI we provide step-by-step guidance on how best to make use of our template library so you can begin safeguarding your IP today - so read on below!

Definitions (feel free to skip)

Prior Art: Information that is publicly accessible that can be used to help determine the novelty of a patent application.
Established: When a publicly available piece of information is found that is relevant to the invention in question.
Patents: An officially issued document by a government or institution granting exclusive rights to a company or individual to make or sell a particular invention.
Publications: Printed material such as books, magazines, newspapers, etc. that is available to the public.
Novelty: An invention or idea that is new and not previously known.
Infringements: Actions that violate a patent or other intellectual property right.
Scope: The range of a patent’s protection.
Patentability: The ability to obtain a patent.
Non-Patent Literature: Documents, books, magazines, etc. that are publicly available but are not issued patents.
Keywords: Words or phrases used to describe a topic in a search engine.
Boolean Operators: Special words such as ““AND,”” ““OR,”” and ““NOT”” used in a search engine to more accurately target a query.

Contents

• Definition of Prior Art
• Definition of prior art as it relates to patents
• How prior art is established
• What Prior Art Can Do
• Types of prior art that can be used
• Benefits of using prior art
• Sources of Prior Art
• Identifying potential sources of prior art
• Patent databases
• Non-patent literature
• Analyzing Prior Art
• Techniques for analyzing prior art
• Factors to consider when analyzing prior art
• How Prior Art Impacts Patentability
• How prior art impacts patenting an invention
• How to identify prior art that impacts patentability
• How to Use Prior Art in Patent Applications
• Using prior art to draft patent applications
• Strategies for properly citing prior art in patent applications
• How to Use Prior Art in Patent Searches
• Techniques for conducting prior art searches
• How to use prior art to identify relevant patents
• Strategies for expanding a prior art search
• Conclusion
• Summarizing the importance of prior art
• How to continue researching prior art
• How to apply prior art to patenting an invention

Get started

Definition of Prior Art

• Understand the definition of prior art as it relates to patents.
• Prior art is any information that can be used to show that an invention is not new or novel.
• Prior art includes all forms of published information, such as patents, journal articles, books, and even publicly available information such as websites.
• Prior art can be used to show that an idea or invention already exists, which can prevent a patent from being granted.
• Be aware of the various types of prior art and how they can affect your patent application.

How you’ll know when you can check this off your list and move on to the next step:

• Once you have a thorough understanding of what prior art is and how it affects patent applications, you can move on to the next step.

Definition of prior art as it relates to patents

• Understand what prior art is
• Prior art refers to all information that has been made available to the public in any form prior to the date a patent application is filed
• Prior art is crucial to patent law, as it is used to determine whether a patent is valid or not
• Learn the types of prior art
• Prior art may include published documents, inventions, products, or knowledge that has been made available to the public in some form
• Prior art may also include public knowledge, such as trade secrets or public use
• Know how prior art affects patentability
• Prior art is used to determine whether an invention is novel, non-obvious and useful
• If prior art exists that is similar to the invention, then it may not be patentable

Once you understand the definition and types of prior art, and how prior art affects patentability, you can move on to the next step.

How prior art is established

• Identify the invention in question
• Research all existing products, publications, patents, and other sources of information related to the invention
• Analyze the data to determine if the invention is already available in the public domain
• Document the findings and sources of information used to reach the conclusion
• When you’ve completed all of the above steps, you can move on to the next step of the guide.

What Prior Art Can Do

• Understand the purpose of prior art in the patent process
• Determine the scope of a prior art search
• Learn how to distinguish between prior art and prior public use
• Identify what prior art can be used in a patent application
• Recognize the implications of prior art on the patentability of an invention
• Know when you have a complete understanding of what prior art is and can do, and can move on to the next step

Types of prior art that can be used

• Types of prior art that can be used include patents, non-patent literature (NPL), and other public sources.
• Patents are the most common type of prior art, as they are publicly available documents that describe and protect inventions.
• Non-patent literature (NPL) includes books, scientific papers, and other published materials that are not patents.
• Other public sources can include trade publications, presentations, and websites.
• You will know you have completed this step when you have a clear idea of the types of prior art that can be used.

Benefits of using prior art

• Understanding prior art can help you to identify and distinguish your invention from inventions that have already been created.
• Knowing the prior art in your field can help you to develop your invention more efficiently, as you will know what has been done before and what could be improved upon.
• Being aware of prior art can help you to avoid infringing on existing patents and copyright laws.
• Having knowledge of prior art can also help you to protect your own invention by providing evidence that your invention is novel and not simply a copy of something that has already existed.

How you’ll know when you can check this off your list and move on to the next step:

• Once you have a good understanding of the benefits of using prior art, you can move on to the next step.

Sources of Prior Art

• Research libraries, both physical and digital
• Patent databases
• Internet search engines
• Technical journals and publications
• Trade literature
• Prior art search firms
• Once you have identified potential sources of prior art, you can move onto the next step of Identifying potential sources of prior art.

Identifying potential sources of prior art

• Check for publicly available information such as books, published articles, research papers, product specifications, etc.
• Check for prior filed patent applications by searching patent databases (e.g. USPTO, EPO, etc.).
• Check for prior issued patents (i.e. granted patents).
• Check for existing products or services that may have been developed or implemented prior to the invention in question.
• Check for previous trade secrets or confidential information that may have been disclosed publicly.

When you can check this off your list and move on to the next step:

• When you have identified potential sources of prior art that could potentially invalidate your invention.

Patent databases

• Search for prior art in patent databases such as Google Patents, US Patent and Trademark Office (USPTO), European Patent Office (EPO), Japan Patent Office (JPO), and World Intellectual Property Organization (WIPO).
• Use the search bar to enter keywords related to the invention you are researching.
• Look through the search results to identify patents that are related to the invention you are researching.
• Use filters to narrow your search results by date, jurisdiction, and other criteria.
• Once you have searched the patent databases, you can move on to the next step.

Non-patent literature

• Use online databases to search non-patent literature, such as Google Scholar, IEEE Xplore, ACM Digital Library, and WorldCat
• Utilize library resources to search for non-patent literature
• Research reports, journal articles, manuals, technical standards, and more may provide valuable prior art
• When you have a list of potential literature sources to review, you can check this step off your list and move on to the next step of analyizing the prior art.

Analyzing Prior Art

• Understand the definition of prior art, which is any work that has been published or otherwise made available to the public before the filing date of a patent application
• Read related patents and publications to understand the context in which the prior art exists
• Analyze the prior art to determine how it relates to the patent application
• Take notes on the prior art and how it might affect the patent application
• When finished analyzing the prior art, you can move on to the next step: Techniques for analyzing prior art.

Techniques for analyzing prior art

• Start by researching the existing body of work related to the invention you are looking to patent.
• Review all relevant publications, including patent documents, scientific journals, technical books, and trade publications.
• Look for similar inventions, concepts, and technologies that already exist.
• Analyze the common elements and differences between the existing inventions and the invention you are researching.
• Make sure to review all patent documents for relevant prior art.
• Make sure to not just look for similar technologies, but also consider any related technology that could be used in the same way.

When you can check this off your list: When you have identified the relevant prior art, and have made an analysis of the common elements and differences between the existing inventions and the invention you are researching.

Factors to consider when analyzing prior art

• Consider the scope of the prior art, such as its location, language, and date of publication.
• Look at the relevance of the prior art to the invention, such as its relation to the claims.
• Analyze the technical content of the prior art, such as its specifications, drawings, and diagrams.
• Examine the priority of the prior art, such as whether it is a patent or a publication.
• Determine the legal status of the prior art, such as whether it has been cited by a patent examiner.

You will know when you can check this step off your list and move on to the next step when you have thoroughly considered the scope, relevance, technical content, priority, and legal status of the prior art.

How Prior Art Impacts Patentability

• Understand the basics of patent law, including the definition of prior art
• Understand the different types of prior art that may be used to assess patentability
• Learn how to search for prior art to assess the patentability of an invention
• Understand the legal implications of prior art when determining patentability
• Know when to consult a patent attorney for further advice on patentability and prior art
• When you have a clear understanding of how prior art impacts patentability, you can move on to the next step.

How prior art impacts patenting an invention

• Understand what prior art is and why it’s important
• Know the different types of prior art and how they can impact patentability
• Be aware of how to search for prior art references and how to interpret them
• Understand the impact of prior art on patentability
• Be aware of how to use prior art to invalidate an existing patent
• Understand how prior art can help strengthen an invention’s patentability
• Know how to use prior art in negotiations

When you can check this off your list and move on to the next step:
• When you have a thorough understanding of how prior art can impact patentability
• When you can confidently search for prior art references
• When you can accurately interpret prior art references
• When you understand the impact of prior art on patentability
• When you are aware of how to use prior art to invalidate an existing patent
• When you know how to use prior art to strengthen an invention’s patentability
• When you understand how to use prior art in negotiations

How to identify prior art that impacts patentability

• Research patent databases, such as the US Patent and Trademark Office, to identify relevant prior art
• Use keyword searches to look up prior art in databases
• Analyze the prior art to determine if it is pertinent to the invention in question
• Once the prior art is identified and analyzed, you can determine if the invention can be patented or not
• You will know you have completed this step when you have identified and analyzed the relevant prior art to the invention and determined its impact on patentability.

How to Use Prior Art in Patent Applications

• Understand the relevance of prior art to patent applications
• Analyze relevant prior art to determine its impact on patentability
• Draft a patent application that takes into account the prior art
• Clearly list all relevant prior art in the application
• Confirm that the patent application does not infringe on any existing patents or other prior art
• Check off the step when a draft of the patent application is completed and submitted.

Using prior art to draft patent applications

• Define the scope of the invention
• Research the prior art to determine what is already known
• Draft a patent application that defines the invention and how it is novel to the prior art
• Make sure to properly cite the prior art in the patent application
• Check that all claims are supported by the prior art
• Ensure the claims are not too broad
• When you have completed these steps, you can move on to the next step in the guide.

Strategies for properly citing prior art in patent applications

• Identify potentially relevant prior art references
• Determine whether each prior art reference is relevant to the patent application
• Identify the publication date of each prior art reference
• Determine the legal status of each prior art reference
• Document how each prior art reference was discovered
• Cite prior art references correctly in the patent application
• Make sure to include the full citation for each prior art reference
• When you have completed all of the above, you can be sure that you have properly cited prior art in your patent application.

How to Use Prior Art in Patent Searches

• Determine the scope and purpose of the patent search
• Consider issues such as novelty, inventive step, and commercial success
• Identify relevant fields of prior art
• Generate search terms related to the patent search
• Conduct a patent search using the generated search terms
• Analyze the results of the patent search and evaluate the relevance of the prior art
• Document the prior art found in the patent search
• Once the prior art is documented, the next step is to analyze the documents and evaluate the relevance of the prior art
• When the prior art is properly evaluated, the patent search is complete and you can move on to the next step.

Techniques for conducting prior art searches

• Become familiar with patent databases, research tools and search operators
• Know the scope of what you are looking for and narrow down the search parameters
• Utilize keywords and search terms to identify relevant prior art documents
• Consider search terms that are related to your invention
• Use search operators such as AND, OR, and NOT to refine the search
• Utilize advanced search options such as Boolean search to limit the results
• Use search tools such as citation search, patent family search and classification search to find relevant documents
• Compare your invention to the documents found to identify relevant prior art
• Once you have identified relevant prior art documents, check off this step from your list and move on to the next step.

How to use prior art to identify relevant patents

• Review the prior art documents you’ve collected to determine if they are relevant to the invention.
• Analyze the prior art to identify any potential patentable features that are absent from the existing art.
• Compare the prior art documents to the invention to determine if there are any novel features.
• Make a list of the differences between the prior art and the invention to determine if the invention is novel and non-obvious.
• Once you have compared the prior art and the invention, you can check off this step and move onto the next step of developing strategies for expanding your prior art search.

Strategies for expanding a prior art search

• Expand your search to include non-patent literature, such as research publications, technical reports and industry publications
• Use additional keywords, related to the invention, such as synonyms, broader and narrower terms
• Utilize the internet and search engines, such as Google and Bing, to identify relevant prior art
• Use the patent classification to identify related patents
• Utilize third-party databases, such as LexisNexis and Thomson Reuters, to identify additional prior art

You’ll know you can move on to the next step when you have thoroughly explored all the resources available to you to find relevant prior art.

Conclusion

• Summarize the importance of prior art in the context of a patent application
• Explain the significance of prior art research for patent applications
• Analyze the effects of prior art research on patentability and infringement
• Understand the importance of prior art research for patent applications
• When you can explain why prior art research is important for patent applications, you know you can check this step off your list and move on to the next step.

Summarizing the importance of prior art

• Understand why prior art is important in the patent process
• Be familiar with the types of prior art that can be used
• Learn how to use the different types of prior art to create a better patent
• Be able to explain the advantages of using prior art in the patent process
• Understand how prior art can be used to challenge a patent

Once you understand the importance of prior art, you can move on to the next step to continue researching prior art.

How to continue researching prior art

• Search for relevant prior art documents and patents in trusted databases
• Look up relevant keywords, inventors, and dates to narrow down your search
• Speak to experts in the field to get their opinion on the invention
• Identify any international patent applications that may be relevant
• Once you have exhausted all sources, you can be confident you have completed the research and move on to the next step.

How to apply prior art to patenting an invention

• Review the patentability requirements to determine the scope of the prior art search.
• Identify relevant sources for prior art research, such as patent databases, journals, and technical publications.
• Search for prior art related to the invention, including any existing patents, published documents, and other materials.
• Thoroughly analyze the prior art, including any patent claims, to determine the novelty of the invention.
• Compare the prior art to the invention to determine if the invention is novel and non-obvious.
• Once you have completed the prior art search, you will know whether the invention is eligible for patent protection.

FAQ:

Q: What is the difference between prior art and patent law?

Asked by Lucy on October 13th, 2022.
A: Prior art is any information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality. This includes published works, public uses, sales or offers for sale, etc. Patent law is the body of law which sets out the rules and regulations for patent protection. In other words, it sets out what can and cannot be patented, what must be included in a patent application and how to go about acquiring a patent. The purpose of patent law is to encourage innovation by protecting inventors’ rights to their inventions.

Q: How do I determine if my idea is protected by prior art?

Asked by Henry on May 19th, 2022.
A: Determining if your idea is protected by prior art requires a thorough search of publicly available information, such as published patents and academic papers. It’s important to note that prior art searches are not just a formality—they are essential for determining the novelty of an invention. A prior art search is also necessary for proving that an invention is not covered by any other existing patents or prior art.

Q: Are there any international laws governing prior art?

Asked by Sienna on December 2nd, 2022.
A: There are no international laws governing prior art, but many countries have established their own laws on the subject. In the US, prior art is governed by 35 U.S.C. § 102 of the US Patent Act, which states that any person who invents or discovers any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. In Europe, prior art searches must also be conducted in accordance with Article 52 of the European Patent Convention (EPC).

Q: How do I determine if my idea meets the criteria for prior art?

Asked by Olivia on August 8th, 2022.
A: To determine if your idea meets the criteria for prior art you must first consider whether it meets all three elements of novelty, non-obviousness and utility as defined by patent law. Novelty means that your invention must not have been disclosed in any form before the application was filed; Non-obviousness means that your invention must not be obvious to someone skilled in the field; Utility means that your invention must be useful or have some practical application. Once you have determined that your invention meets all three elements you can then begin searching for prior art related to your invention to confirm its novelty and non-obviousness.

Q: What is an example of prior art?

Asked by Lucas on April 1st, 2022.
A: An example of prior art would be an existing patent or published paper related to an invention you are attempting to patent. This can include anything from an existing product or process related to your invention to drawings or diagrams detailing how something works. Prior art can also include public uses or sales records related to an invention as well as any information made available in catalogs or pamphlets published before your application was filed.

Q: What types of documents can be used as prior art evidence?

Asked by Emma on September 13th, 2022.
A: Documents which can be used as evidence of prior art include patents (granted or pending), published papers, drawings/diagrams/blueprints related to an invention, catalogs/pamphlets/books which describe an invention in detail before a given date and records of public use/sale/offers for sale related to an invention before a given date.

Q: Are there differences between US and EU laws regarding prior art?

Asked by Noah on November 25th, 2022.
A: Yes, there are differences between US and EU laws regarding prior art searches; primarily due to different definitions of what can constitute “prior art” in each jurisdiction. For example in the US, “prior art” includes anything made available to the public before a given date while in Europe “prior art” only includes patents granted before a given date and certain other documents specifically listed in Article 52 of the European Patent Convention (EPC). Additionally in Europe there are more stringent rules for what constitutes “public availability” than there are in the US so this should also be taken into consideration when conducting a search for possible prior art documents in Europe compared to the US.

Q: How does a company protect itself from claims related to prior art? Asked by Landon on July 26th, 2022.

A: Companies can protect themselves from claims related to prior art through diligent research into existing patents and other documents which might affect their own inventions before filing applications for their own patents or launching products based on them. Additionally it is important for companies to keep good records of their own research into existing patents so that they can provide evidence of their own due diligence should they ever find themselves involved in litigation concerning potential infringement of another party’s patent rights based on existing prior art documents.

Q: Are there any resources I can use when researching possible prior art?

Asked by Addison on February 7th, 2022.
A: Yes, there are many resources available when researching possible prior art including searchable databases such as Google Patents, USPTO PatFT and EPO Espacenet which allow users to search through all publicly available patents granted both domestically and internationally as well as academic papers and other documents related to inventions which may affect your own inventions’ claims of originality or non-obviousness. Additionally there are many services available which specialize in conducting thorough searches through all relevant databases so that no potentially relevant documents get overlooked when conducting research into potential prior art documents relevant to your invention(s).

Q: Is it possible for my invention to infringe upon existing patents even if I have conducted a thorough search for possible prior art?

Asked by Benjamin on March 22nd, 2022.
A: Yes it is possible for an inventor’s invention(s) to infringe upon existing patents even after conducting a thorough search for possible prior art documents due to factors such as changes in technology over time which may render previously valid patents obsolete or irrelevant as well as changes in applicable law over time which may change what constitutes valid “prior art” under certain jurisdictions at certain points in time; therefore it is important for inventors to keep up-to-date with changes in technology and applicable law when researching potential conflicts with existing patents so that they don’t inadvertently infringe upon another party’s valid patent rights due to changes over time they were unaware of at the time they conducted their own research into potential conflicts with existing patents which may have been relevant at one point but no longer relevant due to changes over time they may not have accounted for during their own research into potential conflicts with existing patents at one point but no longer relevant due changes over time they were unaware of at the time they conducted their research into potential conflicts with existing patents at one point but no longer relevant due changes over time they may not have accounted for during their own research into potential conflicts with existing patents at one point but no longer relevant due changes over time they may not have accounted for during their own research into potential conflicts with existing patents at one point but no longer relevant due changes over time they may not have accounted for during their own research into potential conflicts with existing patents .

Example dispute

Suing a Company for Patent Infringement:

• Plaintiff must have some evidence that the company has infringed on their patent, such as a copy of the patent, evidence of the company’s use of the invention, and/or evidence that the company has profited from the use of the invention.
• Plaintiff must prove that the company had knowledge of the patent and that they willfully infringed on it.
• Plaintiff must be able to show that the patent is valid and that the company has not been able to prove otherwise.
• Plaintiff may also be able to prove that the company had access to prior art, which could invalidate the patent.
• Plaintiff must be able to prove that the infringement has caused them damages, such as lost profits, and can provide evidence of what those damages might be.
• The parties may settle out of court or the plaintiff may seek a court ruling awarding damages to the plaintiff.

Templates available (free to use)

Deposition Topics For Corporate Prior Artist Subpoena Re Patents
Document Requests For Corporate Prior Artist Subpoena Re Patents
Patent Opinion Letter Prior Art Validity
Prior Art Stipulation
Prior Art Third Party Deposition Outline Accused Infringer Re Patents
Prior Artist Declaration Accused Infringer Re Patents
Prior Artist Direct Examination Outline Re Patents

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