Patent Prior Art: What is Prior Art for Patents?
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- Опубліковано 23 лип 2024
- Your invention is patentable if it's new and non-obvious over the prior art, so understanding what prior art is and how the patent examiner forms prior art rejections is essential to knowing whether you can patent your invention. This video explains that prior art can be any technology disclosure such as actual products, blog posts, videos or scientific, but most of the time cited prior art during patent examination is publications of issued patents and publications of pending patent applications. Overcoming novelty and obviousness prior art rejections during the patent examination process is discussed as well.
Additional Patent Resources:
- My best-selling book, Patents Demystified: amzn.to/2MX5le9
- The top book on licensing your idea or invention: amzn.to/3tDLSib (One Simple Idea by Stephen Key)
- When to file a patent application: www.dwt.com/blogs/startup-law...
- Is software patentable: www.dwt.com/blogs/startup-law...
- My appearance on CNBC’s “The Profit” with Marcus Lemonis: www.cnbc.com/video/2019/11/08...
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**** DISCLAIMER: Information in this video is not legal advice and should not be relied on as such. The law can change and the information in this video may be outdated, so you should always consult an attorney regarding your specific issues in view of the current state of the law. *****
00:00 - Intro: What is Patent Prior Art?
00:30 - Definition of Patent Prior Art
01:12 - Prior Art Myth 1
02:01 - Prior art Myth 2
02:48 - Prior Art Used in Rejections
04:10 - Novelty and Obviousness Rejections - Наука та технологія
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What a resource this guy is, this channel is like finding treasure.
Thank you for all the great information on Patent.
Thanks! I appreciate it, Curtis.
How does prior art like a blog post or technical article get used in a rejection since these sources will not have explicit claims or claim elements.
Prior art rejections have nothing to do with claims of the reference being cited. For example, for an issued patent that has claims it’s the teachings of the specification and drawings that are used to form rejections - not the claims. Similarly, for prior art like a blog post, it’s all about what is being described.
Question: if I filed a NPPA in 2017 and a new entity receives a patent at a later date, claiming my technology infringes on their patent, would my prior date disallow their claims? Seeing as you state that an application could be prior art.
Possibly. Assuming your NPPA published and has an earlier priority date, it would be prior art against later applications. It might limit or prevent them from getting claims allowed if the Examiner finds your published app and if their claims are not new or obvious in view of your earlier application. Your published application could possibly be used to argue invalidity if they get an issued patent.
Thank you for your videos! If I can please ask this: do examiners compare claims ( only) for novelty and non- obviousness? If so how about the prior art that was not patented and has no claims attached to it?
Thanks.
Thanks! When Examiners evaluate the claims of an application, they compare the claims to the entire prior art document(s) regardless of whether there are claims or not in the prior art document(s). It's a question of whether the claims are new and non-obvious in view of the entire teaching of the prior art. Thanks for the great question!
@@PatentsDemystified thank you! If I can ask an another question. I think I saw all of your videos and I do remember the one where you explained why searching for the prior art is an inefficient approach . But then, this video explains that the IP evaluation is based on comparing a parent claims with prior art claims or the general knowledge/ teaching. How to understand these two swimmingly opposite thoughts? Thank you very much!
Yea, you are probably thinking of my "You Don't Need a Patent Search" video: ua-cam.com/video/YB_9u5uxcfA/v-deo.html It's definitely counter-intuitive, and you would think that since examination is all about whether your claims are new and non-obvious over the teachings of the prior art, you would want to do a prior art search to see what prior art is out there and what rejections you might face in examination and whether to file a patent application at all. However, this is not the case for the vast majority of inventions and prior art searching and analysis is a total waste of time and money. I discuss the reasons in more detail in the video above, but the main points are that the examination process is so subjective and one Examiner will apply prior art completely different than another Examiner, including applying completely different prior art and coming to opposite conclusions on whether the invention is patentable or not.
Also, keep in mind that you patents are not just binary and you can have broad or narrow claims, and the issue is more about whether you will be able to get a broad or narrow patent instead of whether you will be able to get a patent at all. Give how subjective examination is, you won't know how broad or narrow of a patent you will be able to get until you get in front of the Examiner assigned to your case, so why bother doing all sorts of speculative searching and analysis, which is a waste of money. Better just file and let the Examiner frame the issues in examination. Better to spend you money on a better patent application than on prior art searching. From personal experience, I do prior art searching on probably 1/100 cases and I honestly can't remember the last time that a case I drafted and filed was ultimately unsuccessful because we were surprised by prior art. Again, for most inventions (at least the ones I work on) it's more about how broad or narrow of a patent you can get instead of whether it's patentable or not. Thanks for the excellent question!
@@PatentsDemystified thanks a lot for this clarification! I think this is clear now. It is not about objective novelty or objective non-obviousnes right at begining, because they are not quantifiable features. But it is about how broad the claims are. I guess nobody cares about narrow claims:). Now, if I understand correctly, the broader the claim the more likely it will "overlap" something already in the public domain ( patented or not). If the "overlap" happens then the examiners use the novelty /obviousness to describe this "overlap" to deflate the claim.
I am very greatful for all the knowledge that you are sharing with us.
I think I remember you asked to tell you what would be interesting to hear on your channel.
If this is correct, I can possibly suggest to maybe have an episode with an use case that demonstrates broad claims that can not be approved . I apologize if you maybe already did that. Thank you!
Yes, that's correct. A broad claim is good in terms of covering a lot of variations of an invention, but broad claims are also more likely to overlap with prior art to make them not new or obvious. However, submitting broad claims and having them rejected during examination is actually a good thing because it allows us identify the minimal narrowing necessary to make the claim new and non-obvious to keep it as broad/valuable as possible. In fact, we typically structure claims in patent applications to be intentionally over-broad for this reason and expect there to be some rejections, which is a positive thing and results in a more valuable patent.
As it turns out, I recently shot a video where I give an example of claims being rejected in view of prior art during examination and using amendments to make the claims allowable. It should be released in the next few weeks and I'll try to remember to post a link here in case you aren't notified.
If i file for a design patent and it gets issued, and later prior art appears in the form of a blog post or UA-cam video, because said owner of prior art sees design on a product, can my said design patient become void? And can I legally be sued by said prior art owner?
I’m not sure I fully understand the question, but something is only prior art against your patent or application if it was published or has a priority date before you filed your patent application. A blog post or video published after you file your design application would not be prior art against the design application.
Can the art be the same but the material is totally different and the materials is more beneficial than the existing ones?
I'm not sure I understand the question, but it sounds like you are asking about whether something can be patentable if it has the same design as a prior art product, but uses a different or new material that is beneficial over previous materials used in this design. If that's the question, it's very fact specific. Use of a new material may or may not be patentable and it likely depends on whether it would be obvious to one of ordinary skill in the art to use this new material on the old design. Again, it depends on the specifics of the design, previous materials used, the new material and the teaching of the prior art as a whole.
A patent is only as good as the lawyer you have to protect it .
nice and informative videos,do you have a video how to make an patent?,scheeme ,drawings some rules ,also how much cost to file a patwnt,around ..and also if its posible to file a patent for an non US citizen,thnx
Thanks! Non US citizens can get US patents, but may be subject to patent laws of the county where they are a resident or citizen that require them to file in that country first. There is a lot that goes into drafting patent applications and it's typically best to work with a patent attorney to do this. I don't have any specific videos on the details of drafting patent applications at this point, unfortunately.
@@PatentsDemystified thank you for you responce, you see a few days i had an idea (not the first time)and i decided to patent it, the next thing i did, is to search, and i find you.. The point is that im not sure how revolutionary is.. Noone knows before its implemented, the point is, to patent idea with least money.. This idea is like a lottery, i decided to file a patent in US because Americans are better implementing new ideas(im from Italy)
be kind to share your email please🙋♀️thanks💝