Is the Existing Body of Knowledge Available to a Person of Ordinary Skill in the Art
 | 43 (half-dozen) (1991), p. 45. JOM is a publication of The Minerals, Metals & Materials Lodge |
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Considering What Constitutes Prior Art in the U.s.a.
Walter J. Blenko, Jr.In analyzing an existing patent or in deciding whether to file a patent application for an invention, information technology is most e'er necessary to consider the "prior art." Prior art may be divers very broadly every bit the entire body of knowledge from the get-go of time to the present. For example, in a U.S. Supreme Court case more than 50 years ago, the work of Benvenuto Cellini, the noted Italian artist who died in 1571, was cited in the judicial opinion as part of the prior art, invalidating a patent for the lost-wax casting of jewelry. That case was an extreme i, nonetheless, and does not give a fair indication of how prior art is considered.
Nether U.S. patent laws, defining what prior art is pertinent is oft critical. The patent statutes define what constitutes prior art for purposes of anticipating an invention or the claims of a patent application or patent. Unless the alleged prior art tin be brought inside ane of the definitions set forth in the statutes, it is non pertinent and will not be considered.
It is interesting to note that no one has developed a satisfactory statement of what constitutes an invention. Philosophically, this seems to follow from the fact that an invention is something which is institute past reaching out into the unknown. Since an invention cannot exist divers by describing something which is withal unknown, the simply culling is to country what is not an invention. This is done in the patent law by defining what is in the prior art.
The prior art is defined by Championship 35, United states Code, Department 102, which states: "A person shall be entitled to a patent unless...." This linguistic communication is followed by a series of definitions, the well-nigh important of which are summarized in the following.
First, a person is not entitled to a patent if the invention was "known or used by others in this country, or was patented or described in a printed publication in this or a foreign country" before the date of invention by the applicant for the patent. If, for example, an invention is known or is being used by someone in the United States, another person who makes the same invention at a later engagement may not obtain a patent. Prior knowledge or use in a different country, nevertheless, is non a bar to a patent application in the United States. In contrast, a prior patent or a printed publication anywhere in the globe will bar an applicant for patent in the United states of america if it appeared earlier the date of the applicant's invention.
Second, a patent is barred if "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this state, more than one year prior to the date of the application for patent in the United States." This definition of prior fine art is similar to the get-go with 1 of import distinction. In the commencement circumstance, the issue is whether the prior art was in existence earlier the date of invention. In the second circumstance, the issue is whether the prior art was in existence more than one yr before the patent application was filed. There have been many cases in which an inventor has delayed in filing a patent application and has discovered, to his or her dismay, that the patent is barred because some other person put the invention into public use or described the invention in a printed publication afterwards the patent applicant'southward invention but more than one year prior to the filing date of the patent application. This section also requires the inventor to file a patent application within one yr of his or her publication, public utilize or marketing of an invention. Hither too, if more one year passes, a patent awarding is barred. Likewise in this department, a patent document or printed publication anywhere in the world is prior fine art, whereas public apply or placing the invention on sale has an result only if information technology occurs within the United States. The critical point is that if the result is more than than one year earlier the filing date, the patent application is barred. There is no grace period. If a patent application is filed one year and ane day after the critical upshot, the application is besides late.
Tertiary, an inventor is barred from obtaining a patent if he or she patents the invention outside of the United States before the engagement of the patent application in the United states of america, and if the application exterior the Usa was filed more than 12 months before filing the application in the United states. In other words, if an inventor files outside of the Us and then files in the United States inside a 12-calendar month period, any patent which problems on the non-U.South. awarding volition not be prior art. Even so, if the inventor waits more than than 12 months, the foreign patent will be prior fine art. The purpose of the rule is to crave reasonable diligence in filing patent applications in different countries and to prevent a stringing out of the patenting procedure from one land to another.
There are several other bars to patentability that are important but are not, strictly speaking, prior art. Naturally, if an inventor abandons the invention, he or she cannot obtain a patent. Additionally, if A makes an invention, only A tin apply for a patent on the invention.
Other specialized rules may prevent an inventor from obtaining a patent because of specific activities which stand equally a prior fine art barrier.
In a fast-changing world, finding a single slice of prior art which discloses the aforementioned invention every bit that claimed in a patent is not the nearly probable scenario. What is far more than likely to occur is that the prior art will exist something similar just not identical to the patented invention. The patent statutes also provide for this state of affairs—in a negative fashion. Specifically, section 103 of the code provides that a patent may not be obtained "though the invention is not identically disclosed or described [in the prior art] if the differences between the subject thing sought to be patented and the prior fine art are such that the discipline thing as a whole would have been obvious at the fourth dimension the invention was made to a person having ordinary skill in the art." The test which is posed by this section is whether a worker of ordinary skill, knowing the prior art, would take found the patented invention obvious.
The rules for determining obviousness are hard and perplexing for they call upon the courts and the parties to perform the very difficult task of imagining whether it would have been obvious to foresee an invention which is now known to everyone. In principle, obviousness is adamant by comparison one or more pieces of prior art with the invention and and then analyzing the points of similarity and divergence.
Walter J. Blenko, Jr., is a senior partner in the law house Eckert Seamans Cherin & Mellott, 600 Grant Street, 42nd Floor, Pittsburgh, PA 15219; telephone (412) 566-6000; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.
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