Whether you are new to the world of Intellectual Property or well versed in the application and prosecution of patents, you may have heard the term ‘prior art’ mentioned. In this blog we will explain; why prior art is important to patentability, what can constitute as prior art, and the process for overcoming prior art citations to achieve a granted patent.
Why is prior art important to patentability?
When seeking patent protection for an invention such as a product or a process, the UK Patents Act 1977 requires that an invention must meet certain requirements in order to be eligible for patent protection. Those requirements are:
- That the invention is novel, meaning that it is new,
- That that the invention is inventive, meaning that it is non-obvious to a notional person “skilled in the art”, and
- That the invention had industrial applicability.
‘Prior art’ is the term given to anything which has been disclosed to the public prior to the effective filing date of the patent application and which can be relevant to the novelty and/or inventive step of the application. During prosecution of the patent application, an examiner will often cite one or several prior art documents with reference to the novelty and inventive step of certain claims and features of the patent application. The applicant, often with the help of a patent attorney, must provide reasoned arguments which sway the examiner’s opinion as to the patentability of the application, and possibly to include features into the claimed invention which will ensure that it can be considered novel and inventive over the prior art that the examiner has cited.
What constitutes as prior art?
In order for a previous disclosure to be considered valid prior art against a patent application, the prior disclosure must be an “enabling disclosure”. This means that a notional person skilled in the art can read or interpret the disclosure, and without taking an inventive step, recreate the claimed invention. Previously published patent documents are most commonly cited by patent examiners but any documents such as scientific papers and textbooks, articles, product reviews or technical descriptions may be cited. The prior art does not necessarily need to be a document, and website articles, lectures, or even a meeting with a third party that was not under confidence may constitute valid prior art.
Prior art documents can be anything which pre-empts the invention and may be cited from a different technical field from one which the applicant considers their invention to relate.
It should also be noted in some cases, prior art can constitute patent applications filed before your patent application’s effective filing date but that subsequently published on or after that effective filing date. Such prior art documents are citable for novelty only. Note that in these cases, the jurisdiction of the patent applications determine if the document is citable.
Prior art can also come from an applicant’s own disclosure, such as at a trade show or in a meeting, and in the UK and Europe there is no grace period which permits patent applications to be made following public disclosure.
In order for a prior art document to be novelty destroying, it must disclose all the features of the claimed invention. To anticipate inventive step, it should show that the invention would be obvious to a person skilled in the art. If a patent claim lacks novelty, it will lack an inventive step. In the UK, the Windsurfing/Pozolli test is used to determine whether the subject matter of a patent application is inventive. Unlike novelty, it is permitted to ‘mosaic’ documents to argue that an invention is not inventive, provided that an un-imaginative skilled person would be likely to combine those documents.
How can you overcome a prior art citation to proceed your application to grant?
Knowing what prior art exists that may be relevant to your patent application before filing can allow you to pre-emptively limit the scope of the patent claims to avoid the prior art. By conducting a prior art search, an applicant can gain this insight, however it is unlikely that any search conducted before the patent filing date will be equivalent to the search returned by a patent examiner.
Patent searches can help to understand the existing technology in a particular field and your freedom to operate in that field. This can often be an essential step of deciding whether your invention is patentable. If there are features of your invention that are present in various prior art documents, a patent attorney will be able to draft the patent in such a way that it is clear how your invention is both novel and inventive over the closest prior art. To learn more about patent searches, read our previous blog on Patent Searching.
Typically, during prosecution, an examiner may cite a number of prior art documents and provide reasoning as to why they think your application is not novel and/or inventive over those cited documents.
To overcome these objections, the applicant must:
- Provide a reasoned response to the examiner, arguing as to why the invention is in fact new and inventive. This will often include demonstrating to the examiner that the invention has found a new way of solving a known technical problem in the field of invention in a new and surprising way. Arguments which can help this line of reasoning include if the technical effect was unexpected based off the prior art, if it overcomes prejudice in the common general knowledge, or if there is a long-felt need for the solution.
- Alternatively or in addition, the applicant may incorporate other features present in the application as filed into the claims, thereby limiting the scope of protection and moving the invention away from the prior art. The applicant must thoroughly compare and contrast the prior art documents with the application to understand which novel and inventive concept can be protected, and whether this protection would be commercially advantageous.
The UK Intellectual Property Office strongly recommends that a patent applicant instructs a patent attorney when proceeding with patent prosecution. At Bailey Walsh & Co, we have extensive experience in conduction prior art searches and prosecuting patent applications at the UKIPO, EPO and working with our associate network in further jurisdictions.
Conclusion
Prior art may be cited against the novelty and inventiveness of a patent application by a patent examiner and must be overcome to proceed the application to grant. Our patent attorneys at Bailey Walsh & Co are expert patent drafters who have years of experience drafting patent applications with prior art considerations, incorporating features and their commercial viability as well as anticipating objections. If you have any questions on prior art, or patentability and patent prosecution in general, please don’t hesitate to get in touch.
