Prior art is probably best understood as information that can be used by the patent examiner to reject claims in a patent application. This information is most commonly prior publications, such as technical articles, issued patents or published patent applications. It is also possible for prior art to consist of actions, such as a sale or public use prior to a patent application being file. It is critical to understand that a reference such as an issued patent or a published patent application does not need to be identical to an invention in order for the reference to qualify as prior art. A reference can be used as prior art for whatever the reference explains. For example, if you design 5-wheel transportation device you are going to have to distinguish all other wheeled transportation devices, regardless of whether they are identical. So if a patent examiner finds a 4-wheeled transportation device that will be used against you as prior art. It will be up to you to explain why your 5-wheel device is not obvious in light of the 4-wheel device.
There are primarily two questions that must be answered.
• First, is the invention patent eligible?
• Second, is the invention new (i.e., novel) compared with the prior art?
• Third, is the invention non-obvious in light of the prior art? We engage in this three-fold enquiry to determine what, if anything, can reasonably be expected to be obtained in terms of claim scope.
Taking following points as criteria:
1. Novelty: if a prior art reference is found that discloses all elements of the invention, the enquiry ends because no patents can be obtained, if no single prior art reference identically describes each and every aspect of your invention the novelty hurdle can be cleared. Assuming proper search techniques are used and everything that can be found is located, inventors who say there is no prior art universally are saying that there is nothing identical. But there is a critical consideration beyond the question of exact identity. You must focus on what distinguishes your invention over the totality of the prior art.
2. Obviousness: this is required because the patent examiner deals with the issue of obviousness they will look into variety of references and pull element of invention from one reference, and another element of invention form another reference, ultimately seeing if they can all find all the pieces, parts and functionality of invention in the prior art. The elusive nature of what is an obvious invention is due to the fact that what is obvious has been elusive to the Supreme Court of the United States, who thinks that it is a matter of “common sense.” The “common sense” test urged by the Supreme Court, however, ignores that fact that after one learns of something it is always common sense. In essence, the Supreme Court test is overly simplistic and unrealistic. Thankfully the Patent Office and the Courts have chosen to largely ignore the Supreme Court test as literally written, but that only adds to the confusion for inventors trying to make sense of what it means to be obvious.
3. Non-trivial combination: It is important to understand that in order to obtain a patent it is not enough that an invention be new and/or different when compared to what already exists, but rather it must also be a non-trivial combination, which means that one of skill in the art would not have thought to make the invention prior to seeing it described. In other words, it cannot be considered to be a common sense or trivial variation of what has come before. There must be some kind of unanticipated innovative step. Something that would make those in the field of endeavor say “ah, interesting.”
If you are tempted to think or believe that there is no prior art for your invention think again! In all but the most revolutionary of inventions there will be components and structures that are similar to the components and structures of what has been newly created. Similarly, for practically every invention there already exists one or more solutions to accomplish the same or similar task. All of those devices and methods that purport to accomplish the same or similar task are going to be prior art, even if they are clearly inferior.
So how is it possible that an inventor who searches cannot find prior art?
This is typically a result of failure to adequately describe the invention and then searching only limited characterizations of their invention. For example, most inventors will look at what they have invented and then do a word search to see what else is out there. Frequently nothing will be found, not because there is nothing that could be found, but because the description searched is unnecessarily limiting. When a patent attorney or professional searcher engages in a patent search much effort is directed toward figuring out how others have described a particular innovation, particular features and characteristics of an invention.
A thesaurus is your best friend, because while you might describe it as a “bubble mailer” others might describe it as a “padded envelope.” So you must endeavor to figure out all the various possible ways to describe your invention and the constituent parts. In almost every case when you search a variety of characterizations you will eventually stumble across the characterizations that most closely matches what others have previously relied upon. After all, there is no point in reinventing the wheel, so if those that have come before you refer to something in a certain way then you will refer to it in the same or similar way.
The moral of the story is this: there is ALWAYS prior art for your invention. If you search and come up with nothing that is because the search has been inadequate, not because there is nothing that can be found.