Patent infringement is serious - and big - business. A single case can cost hundreds of thousands to defend against and, if lost, millions in damages. Most inventors don't have the resources to defend against such a case. This is where careful prior art patent research is critical. What happens when prior art is found after a patent has been filed? Learn how intellectual property law deals with invalidating patents and the role of the United States Patent and Trademark Office.
What is Prior Art?
Prior art is the term for any public source of information that clearly demonstrates that an idea or article of manufacture already exists before a patent is about to be, or was, issued. For instance, if a toy skunk is patented in 1976 and prior art is produced showing a toy skunk from 1956, the prior art can be used to petition to the United States Patent and Trademark Office (USPTO) to have the 1976 patent invalidated.
Prior art can include, but is not limited to:
- Earlier patents
- Patents from other countries
- Old textbooks
- Public company newsletters
- Articles in magazines, newspapers, and on websites
- Pictures or graphics in magazines, newspapers, and on websites
- Models of devices
If prior art invalidates a patent, then the patent holder no longer benefits from exclusivity regarding the idea. This is why a thorough attempt to find prior art, called a "novelty search", is critical. Proving that the invention is novel in some form needs to be established before filing a patent application.
Why Patent Infringement Can be so Damaging to Inventors
In the U.S. patent law follows the "first to invent" rule. Rather than recognizing the first person who files a patent as the owner of the intellectual property, under first to invent it is the first person who puts an idea or invention to practice, and makes that information public in some form, that holds the claim to the novelty of the invention. Most countries follow the "first to file" rule, making the U.S. unique.
An inventor who does not complete a proper novelty search and who is awarded a patent can later be sued for patent infringement if a previous patent for the same process or item is uncovered. In this scenario, the blow is doubled: loss of one's own patent and a patent infringement lawsuit from the owner of the earlier patent.
How Intellectual Property Law Can Make a Patent Invalid
If a novelty search is thorough enough, then inventors need not fear a different kind of search: the validity search. A validity search looks for prior art that makes a patent invalid. If no prior art is found, the patent holds. If prior art is located, the patent is made invalid via a procedure in which the U.S. Patent and Trademark Office makes the final ruling.
Most validity searches take place when a company or individual is accused of patent infringement. In these cases, the alleged offender conducts research for prior art to attempt to invalidate the patent, thus removing the infringement case. If the owner of the patent doesn't legally hold it because prior art is found, then the person or corporation accused of patent infringement can make the case go away.
The overarching theme regarding IP law and patent research is clear. Exhaustive research is critical for success. Inventors need to leave no stone unturned, no database ignored, and may even need to dust off some old print archives to make certain that prior art, if it exists, is found before proceeding with a patent application.
To learn more about intellectual property issues, please read the following articles:
How to Patent Ideas - Inventions and Intellectual Property Law - read on for information on how to patent an idea, types of patents, costs, when to bring in a professional patent attorney, and more.
Crowdsourcing and Patent Research - Article One, Peer to Patent - discusses the role of crowdsourcing - groups of people distributed worldwide but using social media or forums to solve a problem - in patent research, identifying one company that pays researchers and one that is purely non-profit.
Melanie Zoltan - Melanie Zoltan is a former college professor and administrator who has written for About.com, PCWorld, Brain Child, Thomson Gale, and ...
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