Is it prior art? “Prior art” is any patent, video, catalogue entry, technical treatise and generally any writing published anywhere in the world before the date that you first filed your patent application. ‘Prior art’ in large part determines whether you can receive a patent. If your new invention is the same as the prior art, then your invention is ‘anticipated’ and not patentable. If your new invention is like the prior art, but not exactly the same, then your invention MAY be ‘obvious’ and not patentable.
These concepts make a lot of sense – inventors should be able to patent only inventions that are actually new and that are more than a tiny, insignificant change to what has gone before.
That’s all well and good, but the details have a lot of devil in them, particularly when the question is whether a patent or published patent application is ‘prior art.’ Congress gave the priority of patents and applications its own statute, at 35 USC 102(d). That section says that a patent or published application is ‘prior art’ to a ‘claimed invention’ as of the effective filing date of the application for the patent or published application. Where a patent application relates back to a previous ‘provisional’ application, that effective filing date may be up to a year prior to the actual filing date of the patent application.
In other words, the patent or published application may be prior art as of a date YEARS in the past, long before the patent or published application became public. So your patent application may be denied based on prior art you did not know about and could not possibly discover.
But there may be an out.
The Federal Circuit Court recently issued the Dental Monitoring decision that changed the way the USPTO and this author think about patents and published patent applications as prior art. The USPTO and this author previously believed that if a patent or published application discloses all or part of a new invention, then as of the effective filing date of that patent or application, the patent or published application is prior art to your later invention. After the decision, if the earlier patent application has an earlier effective date due to a prior provisional or other application, then the earlier provisional or other application is only prior art if the earlier provisional or other application supports an actual claim. If there’s no actual claim, then the earlier reference is not prior art.
Like the non sequitur at the top of this article, it’s not entirely clear to this author that the court’s conclusion is correct based on the statute. It is also unclear to this author how the court’s new rule applies to prior published applications that have not issued as patents. Those published applications have claims, but those claims have not been approved by the USPTO, and no one has determined that the disclosure supports those claims. I’m sure that we will learn more in the coming months and years.
Robert Yarbrough, Esq.