Why Should I Care About “Prior Art”?: Reassessing the Importance of Prior Art after the America Invents Act

The implementation of the America Invents Act (AIA) on March 16th is good news, though wrapped in a web of complexities.  Let’s unravel the web and get to some fundamentals that the public can use to successfully navigate the patent system.

There are two ways to approach the patent system.  The first is to enthusiastically embrace and engage it.  This is demonstrated by proactively creating a patent strategy, which becomes manifest in patent applications and strategic acquisitions.  It is further enhanced with competitive insights and proactive strategies to secure areas of technology before the competition does; in short, to innovate.  These players will benefit from the March 16th AIA changes by better understanding and leveraging the “who”, “what” and “how” of prior art.

The second approach is to become a victim of the patent system, consciously avoiding the reality of innovation and the incentives to innovate that are created by the system.

For those busy entrepreneurs who have perhaps unwittingly opted to follow the second route there is still hope! Below, we describe the top four suggested actions to help you take advantage of the AIA changes, avoid pitfalls, and get back in the game.  First, you need to accept a simple reality that has proven itself since the founding of our country: patents are a recognized asset class that help drive and reward innovation, so an entrepreneur looking to maximize investor value has not just a defensive reason to understand patents, but also an opportunity to increase the value of his or her innovation by doing so.

Before delving into our four steps to making the patent system work for you, it is important that you understand the definition and importance of prior art.  Prior art is any publically available description of an invention prior to the date of a given patent application.  Think about that for a minute.  At a more granular level it means any publication in any language anywhere in the world so long as it is publically available and predates your patent application.  That’s a broad definition and a lot of “art”!  So why is it important?  In order to get a patent the invention must be unique, non-obvious and useful.

Under the AIA the definition of prior art became even more expansive, but let’s not get into the weeds on all of the nuance.  Suffice it to say you need to pay attention to prior art.  More importantly, you can take a few related steps to make sure you’re well positioned to successfully navigate the patent system:

1.   Innovation, Not Intervention: Use the patent system to drive innovation rather than intervention.  While there will be things that you cannot control, there are also many levels of complexity that you can completely avoid.  Remember that you can find opportunity in simplicity. Be the innovator.

2.   File an Application:  Before engaging in any collaborative innovation activity with someone outside the company, file a (provisional) patent application.  You’re in business to build commercial value, so it is important to protect the potential value of a new innovation.  If you conclude that your intellectual property is valuable, you can proceed by filing a more expensive application.  The cost is minimal if you follow a few easy rules:

  1. Get great legal counsel to help set up a cost-minimized approach involving a basic background and written description that can apply across your applications so that the application is “enabling.” (Your attorney can explain what this important concept means and you’ll be better for it!)
  2. Set up a program that enables innovators to document their innovations in a manner that can be used to support filing a patent application.
  3. Periodically review your provisionals, select the winners, manage them to your budget and complete the filing.  The benefit is that you can proactively secure patent protection and recognize that these actions are building value.  Also, you will establish proof that you were a “prior user” of the art (again, a valuable concept your attorney can explain).

3.   Educate Yourself:  As you secure your own patents you will learn more about the patent system.  Take that understanding to the next level by learning more about the patent litigation environment (before you get sued!), so that you can get a better handle on your risks of being a target of “trolls”.  “Trolls”, also known as non-practicing entities (NPEs), have developed a robust position in the intellectual property industry.  There are now specific resources to manage the risk that they present and even avoid it through collaboration with like-minded companies.  Exposure to the problem of trolls, as well as suggested solutions, can also inform subsequent patent portfolio creation at your own company.

4.   File Before Making Public:  Recent changes under the AIA have now moved the U.S. patent system toward the international standard of absolute novelty with a first-to-file system.  Think of the date of a patent as the oldest filing date, no matter where in the world it is filed.  Though the definition of prior art once had a large degree of poetic license, the fundamentals now outline that anything public can be considered prior art.  So, before you make anything public, file!

Though the recent implementation of the America Invents Act may be tangled in complexity, it is still possible to successfully navigate the patent system to protect your innovations. With a focus on innovation, an interest in educating yourself about the patent system, and awareness to always file before making anything about your technology public, you can work within the new patent system guidelines to effectively protect and secure your innovation.

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