If you’re thinking of filing for a patent, you’ll believe your idea is completely unique or novel. Before you get ahead of yourself, we advise you conduct a ‘prior art’ search to ensure your innovation hasn’t been patented or publicly disclosed, for example in a published patent application. 

The results of a prior art search is used to determine whether an invention meets the novelty and non-obvious criteria for your application to be granted. It’s an important step in the patent application process that will save you time, money, and legal hardship down the road. 

A definition of prior art

So, what is a prior art search? By definition, prior art refers to any matter which has been made publicly available by written or oral description, by use, or in any other way before the filing date of your application

Prior art could range anywhere from a blog post that describes your idea in detail or a commercially available product that is similar to your proposal. In essence, prior art refers to any relevant ideas, concepts, or technologies that have been made public and could impact the novelty or non-obviousness of the invention you are trying to patent. 

Common examples of prior art

With so many ideas out there, knowing whether your prior art search was successful can be confusing. To help clear things up, here are some notable examples of prior art: 

  • Existing patents that disclose similar technologies or inventions. 
  • Commercial products that are already on sale in the market. 
  • Academic publications like research papers, dissertations, or journal articles. 
  • Publicly available information found on blogs, websites, or online forums. 
  • Published patents or patent applications, that have expired or have not yet been granted. 
  • Foreign patent documents or commercial products in other regions, even if they are in a foreign language. 

Why is a prior art search needed? 

The patent application process is lengthy and can be expensive; therefore, conducting a preliminary prior art search before filing your application will provide an understanding of the novelty and inventiveness of your application before filing, avoiding potential setbacks later on when a Patent Office examiner will conduct their own prior art search to see if your claimed invention is novel and non-obvious. 

Whether you decide to conduct a preliminary prior art search or not, as part of a formal patent application, a patent examiner will determine whether your invention is truly new and non-obvious by running a prior art search during the search and examination phase of the application process. 

Aside from ensuring patentability, prior art searches can avoid duplicate inventions, highlight the competitive landscape, strengthen the chances of your application’s success, and reduce the risk of infringement proceedings with active patents down the line. All in all, it’s an essential step in the patent application process. 

Does prior art have to be published?

Yes, prior art must be publicly available at the time of filing to form part of the state of the art. Unavailable documents such as unpublished articles, undisclosed confidential communications, and prototypes that have yet to be released are examples of non-public disclosures. 

Patent applications that are filed with the UKIPO, EPO or WIPO designating the UK before the priority date of a UK application but have not yet been published may only be cited against the novelty of that UK application, not the inventiveness of that application. 

What is not considered prior art?

To conduct a prior art search with success, it’s vital to know what is not considered prior art. 

Firstly, prior art does not encompass any information that is publicly disclosed after the filing date of your patent. Similarly, things like internal company records, private verbal discussions, and undisclosed inventions are not considered prior art. Another exception includes common general knowledge within a particular field, although this may be cited against the inventiveness of your application. 

Also, the disclosure must be an enabling disclosure for it to count as prior art.  For example, saying what you would like a new product to do is not enabling without some technical details as to how it is achieved!

If you need further advice or are looking to start your search with a professional, please don’t hesitate to get in touch with our expert IP lawyers here at Bailey Walsh & Co.