Definition of Prior Art for Patent Inventions
Prior art is the term given to information (patents, periodical articles, newspaper articles, brochures, actual goods) that has been publicly disclosed prior to the filing date of the patent. It is this entire body of work that forms the backdrop of the analysis of novelty and non-obviousness of an invention.
Essentially prior art answers the question of what was already invented prior to the invention that has been submitted or the invention that has been discovered. Has the invention already been invented by someone else in the world? Is the invention, while new to the inventor, actually something that was invented many years ago by someone else? The answer to this question is found in the prior art. That is, if reliable and acceptable documentation can be found that someone else in the world already invented the invention, then the invention is not entitled to a patent.
Consequently, prior art encompasses everything that came before. Prior art is not limited to other United States patents, but includes virtually any publicly available information including patents and published patent application from any country in the world, academic papers and publications, trade and specialty journals and magazines, on line resources, brochures, sales material, and actual physical specimens. Such prior art can be in any language, and does not have borders.
You can think of prior art as being the entire body of knowledge in a field prior to the invention. A prior publication that is publicly available can be from anywhere in the world qualifies as prior art. For example, a published magazine article in Belize, a patent issued in Guyana, a review of a device sold in the Philippines, a device used in the United States.
This is an overwhelming amount of data, that, if one was to exhaustively search the entirety of the prior art, would be cost prohibitive. Imagine having a search firm search worldwide patents (including patents in countries where there is no on-line access), searching worldwide libraries and universities could cost in excess of six figures.
The searching of prior art is typically a sliding scale, a search of worldwide on-line databases, has a wide scope and a relatively low cost. Thus, having some searching can be cost effective, however, increases in searching, tends to produce diminishing returns. As the search continues, the additional searching tends to have a smaller scope and a greater cost. Thus, it is often suggested that a search of the USPTO, or a search of worldwide on-line databases, along with Internet searches, will tend to strike a good balance between cost and efficacy.
So, then the question is when are searches around the world undertaken. There are many circumstances where increased searching is warranted is where the benefit outweighs the cost. Such situations include, for example, the invalidating of a patent before the Patent Trial and Appeal Board, where the value of the market vastly exceeds the cost of a search. Similarly, if there is an accusation of infringement, with a very large potential liability, it is often of great value to overturn every stone so to speak to find any prior art that may limit or invalidate a patent. Certain freedom to operate opinions over valuable markets likewise may demand that such searching is undertaken.
