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.” []