The prior art is all information dated prior to the filing date of the patent application. That’s the simplistic definition. Prior art could include documents dated after the filing date but was commonly known as of the filing date. Many other nuances exist. But, for the purposes of this article, let’s keep it simple.
Duty to disclose prior art
After you file a patent application, any and all prior art that you and anyone associated with the patent application knows of has a duty to disclose the prior art to the patent office. The duty to disclose is satisfied by filing an Information Disclosure Statement. Otherwise, the validity of the patent will be attacked if a defendant finds out that you didn’t disclose something that you should have.
The best course of action is to play it safe and err on the side of safety. Disclose the information. If you say that the information isn’t prior art, then it won’t matter because the examiner will consider it irrelevant. If the examiner does use it, then it was the right move to disclose the information because it was relevant and not non-analogous prior art.
If you come across prior art, let your patent attorney know so that he or she can properly deal with it.
One common question is whether you have to conduct a search for prior art. You don’t have to do a search for prior art. It is beneficial to do one but there is no duty imposed on you to do a search. The patent office just wants to make sure that they have all of the information you know of and have related to the patentability of the invention. They will do their own independent search.
Types of prior art
Patents and pre-grant publications are the most common types of prior art. These documents are uncovered during a patent search. Pre-grant publications are patent applications that were not yet granted as a patent. They are nevertheless prior art.
Non-patent literature is any documents that are not patents and pre-grant publications. These include webpages, brochures, and anything in printed form or also known as a printed publication.
Applicant admitted prior art is any statements made by the Applicant that the Applicant admits is prior art. Applicant admitted prior art is typically created in the patent application or during the examination stage. Inventors want to explain the prior art in the background section of the patent application. However, we do not recommend doing so because anything you say can and will be used against you. Also, when arguments are presented during the examination, those statements may be construed as Applicant Admitted Prior Art.
Public use includes any demonstration you conducted in the public purview.
Offer for sales includes any offers to purchase the product. Even if the offer was made in confidence, that sale could still be considered to be prior art.
Non-analogous prior art
Inventors may come across a document that they believe is not related to the invention or non-analogous prior art. However, the actual duty to disclose is actually any information that an examiner would consider relevant to the patentability of the invention. Don’t discard a document as non-analogous prior art and one that you don’t have to disclose to the patent office. The best course of action is to play it safe. Disclose it to the patent office.
Exception: Cumulative prior art
The amount of information that you disclose to the patent office might be excessive if you decide to disclose every bit of information to the patent office. When the document already discloses information that you’ve already disclosed, there is no need to disclose that information. This information is referred to as cumulative information, and you are not required to submit it to the patent office.