An item of prior art is considered an absolute bar to the patentability of a claimed invention if, once established as legitimate (e.g., once its date of publication is proved, or it is established as demonstrating that all elements of a claimed invention was in the possession of the public before a key date, etc.), it will incontestably defeat the patentability of a related invention. In particular, for purposes of the Peer To Patent project, a printed publication will be an absolute bar to the patentability of one or more claims of a patent under review if clearly shows all elements of those claims, and it has a date of publication more than one year prior to the effective filing date associated with those claims. (Note that even if such a publication does not constitute an absolute bar to patentability, it still may be a good candidate to submit to the USPTO for consideration as long as its publication date is at all before the effective filing date; in that case, it may become a document that the patent applicant will have to swear behind (i.e., establish a date of invention earlier than) to maintain the viability of the claims.)
A child application is a later-filed patent application in a chain of related applications, filed during the pendency of an earlier application and sharing common subject matter. Child applications include “continuation” applications, “continuations in part” (CIPs), and “divisional” applications. (Continuation and Divisional applications have substantially the same disclosure as their parent applications; CIPs may have new matter added) The claims of a child application that have supporting descriptions in the parent application will be treated (for purposes of considering their patentability with respect to prior art) as if filed on the date of their parent application. That is, their effective filing date (priority date) will be the filing date of the parent application. (Claims that relate to matter added in a CIP will not get the benefit of the earlier filing date).
A claim is the critical defining element of a patent, and the primary subject of examination by the US Patent Office. It is the claims of a patent that are compared to the prior art references to determine novelty and non-obviousness. Claims appear in the form of a series of numbered sentences at the end of a patent, and define the extent of legal protection conferred. Each claim consists of an introductory segment (a “preamble”), followed by one or more phrases or clauses (“claim elements”) separated by commas or semicolons. Each claim element (or portion thereof) may be referred to as a claim “limitation” since it adds another necessary element to the scope of the invention, thereby limiting the class of infringing devices, methods, etc., to those having that limitation. In order to exclude someone from using a patented invention, the patent owner must demonstrate that what the potential infringer is using falls within the scope of at least one claim of a patent (i.e., that the infringing device, method, etc., has all the limitations of at least one claim of the patent).
A continuation is a second patent application for the same invention claimed in a prior application and filed before the original prior application becomes abandoned or patented. The disclosure (description of the invention, embodiment, etc.) presented in the continuation must be substantially the same as that of the original application. Other forms of continuing applications include divisional applications, and continuation-in-part (CIP) applications (with this latter type possibly adding new subject matter to the matter included in the original prior application.) Continuation and Divisional applications get the benefit of their parent application’s filing date (i.e., for prior art purposes are treated as if filed when the parent was filed). CIP applications get the benefit of the parent application only with respect to matter that was also disclosed in the parent application.
In the context of the Peer To Patent processes, the critical date is the date prior to which printed publications, disclosing all elements of a claim of an application under review, will be an absolute bar to patentability of that claim. In general the critical date for a US patent application will be one year prior to the priority date of that application.
A dependent claim is a claim that refers back to at least one previous claim(s), explicitly referring to it (them) by number. By referencing a prior claim, a dependent claim incorporates all the elements/limitations of that prior claim – adding to it the elements / limitations of the dependent claim. Since the dependent claim will possess all limitations of a referenced claim plus some of its own, the dependent claim is “narrower” than the claim to which it refers; that is, the set of devices, methods, etc., which are covered by the referenced claim will be reduced (narrowed) to only those also possessing the additional limitations of the dependent claim. Accordingly, examination of dependent claims includes finding prior art references having the elements / limitations of the referenced (prior) claim as well as those of the dependent claim.
An application filed with the US Patent and Trademark office will be accorded a filing date when all required elements have been received. That date (or if the application is the child of a related parent application, the filing date of its parent) will be key to determine the relevance of prior art references found during the Peer To Patent process.
An independent claim is a claim that stands on its own … making no explicit reference to any other claim. A patent or patent application will always have at least one, and usually several, independent claims.
The US Patent and Trademark Office will cause a patent associated with an application under review to issue when it determines that it complies with all statutory formalities and that the claims remaining in the case are allowable over all prior art of record in the case. Once issued, a US patent is presumed valid (though the presumption is rebuttable.)
An item of prior art (a prior art reference – e.g., a printed publication) is said to be “material” to the examination of a patent under review if it is not duplicative of information already in the record of that application (e.g., information disclosed in the application itself), and if it establishes (alone or in combination with other information) that a claim or claims of that application appear to be invalid. A reference that discloses one or more key elements of at least one claim would likely be considered a material reference (if not already part of the record).
A parent application is the first-filed application in a chain of later-filed continuation patent applications. A patent application becomes a parent application when a related continuing application is filed, based on it.
A patent application is a request pending at the Patent Office for the grant of a patent for the invention described and claimed by that application. An application consists primarily of a description of the invention (the “patent specification”), supporting drawings, and a set of patent claims.
The person of ordinary skill in the art is a legal fiction used in the patent field to determine whether a claimed invention is “obvious”, or whether the invention has been sufficiently disclosed by the inventor. It is the former context (obviousness) that is relevant to the Peer To Patent processes; comments from peers on the adequacy of disclosure will not be considered by the USPTO. Essentially the legal fiction is one whose purpose is to have an invention examined in the context of the technical field to which it belongs. Conceptually the idea is to review the invention knowing what is generally known to those working in the relevant field. In practice, this means that peers reviewing a patent application, when they can not locate a single prior art reference essentially disclosing all elements of a claim, should look for multiple references that together show the invention (where there can be shown some reasonable basis that the references would be considered together by one working in the relevant field).
A patent application is required to contain a description of the details of the invention sufficient to permit someone ordinarily skilled in the art to which the invention pertains to carry out the invention without undue experimentation. Those details will typically constitute the bulk of the patent or patent application text (the “patent specification”), and may be characterized as the “preferred embodiment” , “best mode”, etc. While those details will provide the key to understanding what the inventor meant by the claim language, any such details that are not captured directly or indirectly in an individual claim are not, strictly speaking, part of the invention, and reference material related only to them will not be useful to the PTO in narrowing the scope of the claims.
Any document or drawing will be considered a printed publication (for purposes of its being considered prior art to the USPTO) if it is sufficiently accessible to the public interested in this particular technology. If the document is not able to be located by such an interested person with reasonable diligence, or if the information was disclosed only to persons having an obligation to keep it secret, it will not be considered a potential prior art printed publication.
In general, prior art refers to any information that has been made available to the public in any form before some date. Since the United States has a “first to invent” patent system, the relevant date is, generally speaking, the date a particular invention was made.
Although an invention is typically made some time before the filing of an associated patent application, the filing date of the application is the initial “stake-in-the-ground” information that the patent office has about a particular invention, and that date will be the focus of the examination of that application and consideration of prior art. (Note: a particular application may be a “child application” of another application in a chain, and if a parent application of that child describes the invention under consideration, then the effective filing date for that invention will be the filing date of the parent application ? and it is that date which will be the focus of examination / prior art for that invention.)
While prior art is a broad category of information, it is only a particular form of prior art that is the subject of the Peer To Patent process: Printed Publications. A printed publication that describes an invention (or a significant portion of an invention) claimed in a patent under review should be considered for submission to the USPTO if it was published before the effective filing date of that application; and a printed publication having a publication date more than one year prior to the effective filing date of the patent under review is very strong prior art …. potentially invalidating one or more claims of that application since it would constitute an absolute bar to the patentability of any related claims.
The priority date of a patent application is its effective filing date … which may be its own filing date, or the effective filing date of its parent application (if it is a child application (continuing application; divisional application; etc…))
When a Printed Publication (or other prior art reference) that is material to the patentability of one or more claims of a patent application under review was published before the effective filing date of the patent application … but not long enough before to constitute an absolute bar to patentability …. The USPTO will likely reject the relevant claims based on that reference. However, the applicant will have the opportunity to swear behind the reference (i.e., to provide additional evidence (e.g., of an earlier date of invention) that will remove that reference as an obstacle to patentability. Such references are still good candidates for submission to the USPTO since it is an open question whether the applicant will be able to provide the evidence needed to defeat them.