Modern patent practice is all about prior art

The patent process can be expensive, so the last thing you want to do is spend a lot of money preparing and filing an application when there is “knock-out” prior art easily found that will prevent a patent, or at least make any patent that is obtained extremely narrow. For this reason, many choose to begin the patent process with a patent search. Proceeding without a search is particularly problematic today given the likelihood that any valuable patent will be challenged in a post grant proceeding at the Patent Trial and Appeal Board. Getting rights you have confidence in has to be the name of the game.

Challenging patents in post grant proceeding also requires a competent, thorough search too, for many obvious reasons and at least one not-so-obvious reason. When a challenger seeks to take out claims to a patent, the current rules are significantly slanted in favor of the challenger and against the patent owner. The challenger does not really need to take out all the claims to a patent in post grant. Instead, you may opt to find the best prior art available and focus on a limited number of truly vulnerable claims (of which there are typically several to choose). Put all your attention on those vulnerable claims, get those claims declared invalid, and then circle back with a reexamination request where the burden will then be shifted to the patent applicant.


Invention to Patent: The Pitfalls, Perils and Process

The following was written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

So you have an idea and want to get a patent? There are a number of things that you need to know about the invention and patent process that can help you focus your efforts and know what obstacles lay in front of you.

The first thing to know is that you cannot patent an idea. Many people will have great ideas, but will not be able to put that idea into a package appropriate for a patent because there is no invention, only a concept. To be sure, the idea is the all critical first step in the invention process. After you come up with the idea or concept you now need to put together a game plan on how to carry that idea through. The idea and game plan together form what the law calls conception. Conception is an important concept in patent law because in the United States it is the first person to invent that CAN ultimately receive the exclusive rights on an invention. (more…)

There is No Prior Art for My Invention

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art.  Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art.  Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.

Prior art is probably best understood as information that can be used by the patent examiner to reject claims in a patent application. This information is most commonly prior publications, such as technical articles, issued patents or published patent applications. It is also possible for prior art to consist of actions, such as a sale within the United States more than 12 months prior to a patent application being filed, or public use in the United States more than 12 months prior to a patent application being file. For more on this see What is Prior Art? (more…)

What is Prior Art?

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

Unfortunately there is no easy answer to the question of prior art, particularly for those who are new to the patent field. We can start off with the understanding that a particular reference or piece of knowledge will be considered to be prior art that must be overcome by a patent applicant if the patent examiner is legally allowed to use it against the applicant to reject one or more claims in a pending application. Likewise, a reference or piece of knowledge will be prior art if it can legally be used to invalidate one or more claims of an issued patent during litigation.

The trouble with explaining what prior art is stems from the fact that everyone already thinks they know what it is. Conceptually we do not want to issue patents for inventions that are not considered new, which seems fair enough. The trouble is defining what is “new.” For now, let’s just say that prior art must be a reference of some type (i.e., a patent or a printed publication) or some type of knowledge or event (i.e., public knowledge, public use or a sale of a product) that demonstrates that the invention in question is not new. (more…)

Why Open Source Stalls Innovation and Patents Advance It

Written by Gene Quinn (IPWatchdog and Practice Center Contributor)

Over the last couple weeks I have been giving more thought to open source software and what, if any role it has to play with respect to the economic future of both start-up companies and established giants.

My belief is that open source can and should play a vital role in innovation, but the way it is by and large carried forward today does little to forward innovation and an awful lot to significantly disadvantage start-up companies.  The horribly bad advice that pervades the open source community and the utter lack of knowledge or familiarity about patent law is staggering.  I don’t begrudge anyone who doesn’t like the patent system, but can you please at least not like it for a valid reason?  With the myths and disinformation spewed by those who are either clueless and loud, or those who know better and have an agenda, are drowning out rational debate and significantly impeding progress and innovation.

Just the other day I received an e-mail from an individual asking a few questions about my opinions and views of open source software. I had been planing on writing about this for a while, and this is what prompted me to stop thinking and start writing. (more…)