President's Corner

Your Nemesis For Life…Prior Art!

At our last meeting we had a discussion on prior art as viewed by the patent office. After the meeting some of the attendees seemed to be even more confused about what prior art is and how it can be used against them.

I searched the USPTO website for a definition of prior art and got back 41,100 hits of were prior art was defined for specific circumstances. Basically, it is anything that is known to exist in the world before you filed your application and you might be surprised at what the examiner can come up with.

In my case, the examiner cited a metal hot air duct fitting against my PVC electrical fitting because it performed a similar function. I had a one on one with an examiner instructor at a USPTO Independent Inventors Conference, like the recent one up in Tampa, to find a way around it. After quite some time, he gave up and asked if he could use the reference for his classes. I did overcome the rejection but that is a story for another time.

When their patent issues most inventors think they are done with prior art, Not So Uncle Joe!

Those pesky varmints are hiding out there just waiting for someone to put them to use to invalidate your patent. Now why would some mean bully want to do that to you? A number of reasons come to mind.

Maybe they were infringing on you and you couldn't come to a licensing agreement. Maybe they want to infringe on you and that patent is in their way. Maybe YOU are unknowingly infringing on Them and don't want to share the benefits of all your hard work with them. Maybe it's You trying to invalidate their patent at which point you could be invalidating your own.

A new trend I wrote about months ago that is alive and growing is Crowd Sourcing prior art searching. The concept is, if you can get enough people around the world looking for something somebody is going to find it. Recently, Blackberry users band together to send prior art to Motorola to aid in their case with Apple.

Don't get me wrong. Every new product that makes it to market isn't routinely crushed by big business. As a matter of fact we often publish information regarding Open Innovation and other programs they have to help us.

However, if you are working on a significant project in a very litigious industry like software, high tech or medical you better budget for a serious prior art search, a very expensive patent and be prepared for war when it comes because (similar to the movie Field of Dreams) if you are successful war will come and the solders in that battle will be…

The Dreaded Prior Art,

Leo