Q: Can one fight a patent for prior art which was NOT patented? And if yes, how to proceed, how much to invest?

2 Lawyer Answers
John B. Hudak
John B. Hudak
  • Intellectual Property Lawyer
  • Milford, CT

A: A patent can be invalidated for many reasons. Prior art which is not part of a patent can be used to invalidate a patent.

The strategy on how to deal with patent issues can be complicated. Consider consulting with a patent attorney to develop a strategy.

The above answer is a generalization and there are many caveats, therefore a full analysis is required when dealing with each unique legal issue.

Bill Hulsey
Bill Hulsey
  • Intellectual Property Lawyer
  • Austin, TX

A: Absolutely. Here are the guidelines for what qualifies a prior art:

Prior art constitutes those references or documents which may be used to determine novelty and/or non-obviousness of claimed subject matter in a patent application

Common Types of Prior Art


–Printed Documents

•Patents and published patent application (domestic and foreign)

•Non-Patent Literature: magazine articles, newspaper articles, electronic publications, on-line databases, websites, or Internet publications (MPEP 2126-2128)

Public Use or On Sale

–The public use or sale (including offers to sell) must have occurred early enough to qualify as prior art

• A document that does not have a prior art date may provide evidence of a public use or sale that qualifies as prior art

“Otherwise available to the public” is a new catch-all provision of 102(a)(1) that has no explicitcounterpart in pre-AIA law. For example:

•an oral presentation at a scientific meeting

•a demonstration at a trade show

•a lecture or speech

•a statement made on a radio talk show

•a YouTube video, website, or other on-line material (this type of disclosure may also qualify as a printed publication under AIA and pre-AIA law)

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