What is Prior Art in Today’s Environme

Presented to

U.S. Commodity Futures Trading Commission's Technology Advisor

April 28, 2005

by

John J. Love

The United States Patent and Trademark Office

john.love@uspto.gov
What is Prior Art?

 Issued patents, published applications, publis

articles, published information.

 Public knowledge or use in the United States b

(not the applicant).

 On sale or in public use in the United States m

one year prior to the date of the application.

 Obvious variations of the above.
What is Prior Art? (c

 Pictures and drawings U.S. and Foreign patents Published US and foreign 

patent applications

 Admissions by applicant

 Printed publicati Documents whic

establish public uof an invention

 Electronic public

• websites

Prior art must be publicly accessible adefined as “any relevant knowledge, adescriptions, and patents which pertabut predate, invention in question.” BLaw Dictionary 1193 (6th ed. 1990). 

Examples:
Pictures and Drawin

 Pictures and drawings can 

used as prior art to the extethey show sufficient structudetail.
U.S. and Foreign Pat

Patents are relevant prior art for The specification Non-preferred embodiments Disclosed examples Subject matter incorporated by ref Anything that would have been rea

suggested to one having ordinary sthe art.
U.S. Published PatenApplications

 Under certain conditions a rejectio

under 35 U.S.C. 102(e) or 103 can made using a published U.S. patenapplication.

— At 18 months after filing in accorda

with 35 USC 122(b) and 37 CFR 211
Foreign Published PaApplications

 Like U.S. applications, pending 

foreign applications are confideuntil a certain stage in the pateprosecution proceedings:

— Upon granting the patent;— Or until a certain date, for examp

months after filing, as may be spby the patent laws of each individcountry.
Printed Publications

 A reference is a printed publication 

accessible to the public.

— A reference is proven to be a “printed 

publication” “upon a satisfactory showsuch document has been disseminated otherwise made available to the extent persons interested and ordinarily skillesubject matter or art, exercising reasondiligence, can locate it.” In re Wyer, 65

221, 210 USPQ 790 (CCPA 1981).
Printed Publications 

 Orally presented papers can 

constitute a “printed publicationwritten copies of the paper(s) amade available without restrictall interested persons. MIT v. AB 

Fortia, 774 F.2d 1104, 1109, 22

USPQ 428, 432 (Fed. Cir. 1985). 
Printed Publications 

 Internal documents intended to 

confidential are not “printed publications” and are unavailable use as prior art. This is regardleshow many copies are distributed
Printed Publications 

“While distribution to governmen

agencies and personnel alone maconstitute publication...distributcommercial companies without restriction on use clearly does.” G

v. United States., 422 F.2d 874, 878, 1

USPQ 521, 524 (Ct. Cl. 1970).
Printed Publications 

 A publication disseminated by 

is prior art on the date it is received by at least one memof the public. In re Schlittler, 

F.2d 882, 110 USPQ 304 (CCP1956).
Documentation and/oAdmissions by Applic

 Applicant’s own work, available 

the public more than one year prto the filing date, is prior art to everyone.

 Applicant’s disclosure of his or h

work within the year before the application filing date of the invention cannot be used as prioagainst the same inventor to rejclaims.
Admissions by Appli

 Admissions as prior art – work 

another

— Statements made during prose— Reference in the specification t

art;

— Jepson type claims: 

• presumption only – may be overc
Documentation and/or Admissions by Applica

 Submissions to other governm

agencies that are made publibe used as prior art.

— E.g., U.S. Securities and Exchange 

Commission’s EDGAR database http://www.sec.gov/edgar.shtml
Public Use or On Sa(35 U.S.C. 102(b))

 An invention is in “public use

that invention is publicly usewithout restriction or obligaof secrecy. There is an experimental use exception. 

 A single sale or offer to sell t

invention may constitute a bpatentability.
The Evolution of Prio

 Both U.S. and foreign patents have

the past, been the most relied upoform of prior art publications in papractice

 However, in some emerging techn

areas such as business methods, examiners utilize non patent litera(NPL), especially those in electronsearchable databases.

— Federal Register notice was published 

June, 2001 listing core NPL databases searched by the examiners and asking public comment.
The Challenge of Prior AToday’s Environment

 It can be difficult to identify invent

that may have been common practcommon knowledge in an industryhave not been documented, nor danor disclosed in a form that is easilaccessible by patent examiners. 
Electronic Publicatioas Prior Art

An electronic publication is conto be a “printed publication” prthe publication was accessible tpersons concerned with the art which the document relates. 
Electronic Publicatio(cont’d)

Thus, “whether information is printed, 

handwritten, or on microfilm or magnetic tape, etc., the individual who wishes to characterize the information as a printed publication

...should produce sufficient evi

of its dissemination or that it has been 

otherwise available and accessible to pers

concerned with the art to which the documrelates...” Wyer, 655 F.2d at 227, 210 USP

795, Amazon.com v. Barnesandnoble.com, 

Supp. 2d 1228, 53 USPQ 2d 1115, 1119 (WWash. 1999)
Electronic Publicatio(cont’d)

 Prior art disclosures on the Intern

in an on-line database are consideto be publicly available as of the dthe item was publicly posted. 

— The item must be dated and not tem— They must be indexed for subsequen

retrieval
Websites as Prior A

 Websites can be used as 

references if posting dates cafound, and these posting datepredate the invention. 
Software Products Prior Art

 Software products can be 

relied upon as prior art as the date they were first installed or released. 
Conclusion

 Broadly stated, prior art is the publ

disclosure of claim features in a filepatent application before the filing of that application.

 Prior art must be accessible to the 

public.

 In addition to the traditional source

prior art, examiners are now focusion electronic publications, websites software products to examine pate
The End

Thank You