As mentioned in my previous article, one of the most productive uses of resources when opposing a European patent which has been granted is to conduct a thorough prior art search. Prior art is not, however, limited to prior patent applications. It’s worth considering in detail where possible avenues of disclosure might arise.
Starting with the obvious, prior published patent documents are an excellent form of evidence. There is an official date on a patent publication which demonstrably places it within the state of the art. There are plenty of places in which patents can be sourced freely. Espacenet, the European Patent Office’s searching database, is an excellent tool and we have guides to how to search efficiently and effectively. Google Patents also offers searching functionality in a form which will be familiar to most users.
More powerful commercial tools are available, many of which include AI technologies to assist with identification of documents of importance. We are able to assist with searching packages which can be conducted in a more targeted and therefore time and cost-effective manner.
Whilst patent publications are the most likely source of destructive prior art within the IP sector, due to the possible wide-ranging scope of disclosure within a patent application, it may be worthwhile also reviewing the state of the art for design registrations, particularly from the patent proprietor themselves. This may provide the opponent with a better indication of what may have formed the true state of the art, rather than what may have been deemed sufficiently inventive to warrant filing for a patent, given the lower bar to grant for a design registration. Equally, it’s possible that a designer may have filed an earlier design application in error, prejudicing their own prospects for patent grant.
Of course, since design registrations are image-based, rather than textual, searching becomes more complex, which is why targeted searching to specific proprietors can be the most effective method here.
Public disclosure within the industry
The state of the art refers to the known corpus of information available to a skilled person within a technical field as of a relevant date of filing or priority. Where better, then, to search for possible prior public disclosures of an inventive concept of a patent to be opposed, than within industry-specific literature.
Catalogues, trade brochures, and magazines all represent possible public disclosures of information pertinent to patentability. It is definitively worth investigating the proprietor’s own literature, on the off chance that there has been an unanticipated self-disclosure which would automatically invalidate the patent. Whilst highly unlikely to be the case for a careful applicant, the destructive potential of a prior self-disclosure renders this as a tempting avenue of exploration for the prospective opponent.
What can be difficult with industry literature however is the demonstration of an absolute date of disclosure. This is particularly challenging for paper documentation, where there are no electronic date-stamps to refer to.
Literature which can be directly connected to specific events, however, can mitigate this issue. For instance, documents which have been prepared for specific seminars or trade shows, for example, will likely have corroboratable dates of disclosure, which could be supplemented by witness statements to attest to specific disclosures which may have occurred at past events.
The state of the art refers to any publicly available material as of the relevant date of filing or priority, and of course, does not preclude alternative means of disclosure.
Transitory sources of information on the internet, such as website disclosures, offer public disclosures which are seemingly only attributable to the date of accessing the relevant material. If the disclosing party has altered their source data, the demonstrable date of public disclosure may be lost. The internet archive, however, is capable of trawling through available websites, saving data to a vast archive as of specific dates. The first recorded capture of http://www.ebay.com/ is dated 14 June 1997, and is an illuminating illustration of how we used to live.
The internet archive is non-discriminatory, and therefore is likely to have captured relevant disclosures from the proprietor’s website, which may illustrate the state of the art not considered during examination of the European patent. It will also likely have captured old iterations of your own website, which may potentially also be of use in preparing infringement defences, for instance.
Scholarly works can also assist. Academic journals are excellent places to find bleeding edge information, which in many fields can lead to conflict with the desire to file patent applications. This can therefore lead to potentially damaging disclosures, and are worth reviewing. Paywalls can be an issue for sourcing data on a budget, however. Aged textbooks can also be good sources of damaging disclosure; textbooks can often veer off-topic, commenting on areas of the technical field which once may have been commonplace. These can be good tomes to consult if the proprietor seems to have ‘reinvented the wheel’, and has patented something which is inconceivably broad.
In summary, there are lots of possible strategies for effectively accruing relevant prior art disclosures which can be used in novelty and inventive step attacks for an opposition, and the prospective opponent may find success by casting the net widely and searching across a broad range of different types of disclosure.
If you have any patent, design or trade mark queries, please contact us via email, by telephone: +44 (0)1242 691 801, or using the form below and we will be happy to advise and guide you.