In the Froth

Worrying About Your Own Prior Art

Despite various paranoid theories to the contrary, patent offices are only infrequently omniscient.  On the other hand, they certainly do know how to search, and one of the first things they search for is art that the inventor or inventors themselves have produced — so don’t be surprised if that art is cited against you when you file a patent application.  Although this is most commonly a problem for people who publish, including particularly academics,1 “publication” actually has a more general meaning of publicly disseminated documents, including (to pick a few random examples): sales documents, public presentations (slide shows), marketing materials, etc.  In pre-internet days these materials probably wouldn’t turn up in the searches that patent offices did; now, however, it turns out that patent Examiners know how to google as well as search their own databases, and so such documents are fair game.

The reason I bring this up is that the inventor is usually her own worst enemy when it comes to patenting; most people like to talk about what they’ve been working on, and patent offices may not be omniscient about plain old talk,2 but omniscience comes easily when all that’s required is an internet search for previous documents.  This breaks down into a lesson in disclosure for the inventor(s), and a lesson in diligence for the investor(s).

Disclosure

For the inventor, the operative term is “disclosure,” by which I mean being honest about what you’ve published and talked about in the past, honest primarily to yourself and your investors, but also honest with the patent office(s) — which are likely to find out anyway.

In this regard, I understand that inventors are usually forward-looking, and tend to see what they’ve published or talked about before as “merely old hat,” or some such irrelevant stuff, unlike what they’re now seeking money and patents on.  But patent offices don’t see it that way: I’ve already talked about lack of novelty and obviousness, and the most graphic way I could put it is to say that patent offices don’t usually see an invention as springing Athena-like from Zeus’s head.

No indeedy.  So if you’re the inventor, you need to sit down and honestly review your prior publications and other public disclosures, or, better yet, accumulate them and then take them to either your technology transfer office (if you’re an academic) or a patent agent or attorney.  And when I say “your” publications and disclosures, I also mean the people who work for you or with you who might also have published or presented — for example, graduate students and postdocs.  And those pesky poster presentations or abstracts that you or your students or coworkers got all fired up about for the First International Conference on Biotechnological Methods in the Pan-Zoroastrian Republics — with the internet and a little computerized translating, those short disclosures might be relevant too, and you need to consider them.

Also, as an inventor you have a duty to disclose relevant publications to the patent office, and patent rights can be lost if you breach that duty.  So disclosure is a necessity for that reason as well.3

Diligence

Like herrings and wolves and other such creatures, inventors do not usually operate alone; and, if you are an investor or other person operating in conjunction with an inventor or inventors you owe it to yourself to be exceedingly diligent about what public disclosures the inventor may have previously made that are either: 1) perilously close to the invention(s) you’re investing in now; or, 2) are close enough that they will be problematic for patenting.

What this means is — to put it in the words of a former president — “Trust, but Verify.”  Take the name or names of your inventor(s) and do what the patent offices will do: look up those inventors in the scientific literature, patent literature and using google or whatever search engine you favor, and see what they’ve published or otherwise disclosed that falls within the ambit of the invention(s) that you’re working to commercialize.  It may not be easy to find that problematic abstract on “DNA Testing of Tarim Mummies: Evidence for Tocharian Group Proto-genes Conferring Resistance to Auto-Combustion and their Relevance to Zoroastrian Rituals on the Silk Road — A Metasurvey” that appeared in that conference seven years ago, but abstracts have a way of cropping up in places you can find them,4 and the sooner you know what’s out there the sooner you’ll be able to get a sense of what the patent offices might cite against you.

And keep in mind that the resources of law firms and technology transfer offices are hardly infinite, and that it’s up to you to do your own homework, rather than relying on someone else to tell you that there won’t be inventor-related documents that will affect the invention you’re interested in.

Conclusion

I realize that it’s not especially sexy to look through old documents when thinking about an exciting new discovery.  But I can’t say how many times a little bit of that sort of looking went a long way in terms of finding out things that should have been learned before a patent application was written or licensed.  If Gandalf had done his diligence in Gondor early-on, the Ring would long since have left the Shire.5  Admittedly that wouldn’t have made for a good set of movies,6 but it would have made for sound patent strategy.

Which is, after all, what these posts are ostensibly about.

  1. People who Publish Profligately. []
  2. Talk tends to be lethal later on, when the validity of a patent is litigated, a situation where there are highly-interested parties involved who have the time and money to dig up people who can recount what was said publicly years before. []
  3. It’s beyond the scope of this article to go into further detail about the duty of disclosure, which is actually an art in-and-of-itself, in that this duty in some cases is taken by patent professionals to be evidence weighing against doing searching — you can’t be in breach for failing to disclose stuff that you didn’t know about.  I’ll leave this discussion to a later posting. []
  4. For an academic inventor, looking at their website or CV is a great way to start. []
  5. Hey, that’s at least as quotable as “Listen, strange women lying in ponds distributing swords is no basis for a system of government,” and look how far that one went. []
  6. “`One Ring’ Goes Uneventfully Into the Fire; No Sequels.” []