Page 11 - February 2021 PPIAC Newsletter FINAL

Simply put, prior art is information that has been available to the public before a

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certain date (in the United States, this is the date of the invention ). If it can be shown
that prior art exists, the patent is invalid. Examples of prior art include photographs,

brochures, user manuals, drawings, and articles—anything that was available to any

member of the public. This is where investigators can be a great benefit to patent
attorneys.

Alleged infringers can also prove a patent is invalid by showing that the invention did

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not meet the requirements of novelty or non-obviousness. Novelty requires that the
invention be entirely new, while non-obviousness means that the invention cannot be

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a variation or an obvious improvement of an existing invention. There are great

opportunities to be creative in your investigation. In one recent case, investigators

were asked to locate any prior art that existed before the date an inventor claimed he

invented a certain machine—which was in 1996. This date presented many

challenges, the least of which was the fact that the Internet was not widely used back

then. The first step investigators took was to read the patent, and truly understand

what the claims in the patent were. In other words, they had to understand in depth

how the machine worked, and what made it different from other machines. Next, the

investigators determined who else manufactured these machines (other than the

parties involved in the case) and researched their product lines and histories.

Cooperation was not always forthcoming from these companies, as many indicated

they were afraid of also being sued by the plaintiff in this case. The companies that

were willing to help were rich sources of user guides, older advertisements, schematic

drawings for successful and failed products and even photographs of products in

several developmental phases. Other valuable sources included a museum dedicated

to this type of machine, security video from trade shows featuring these machines,

and a historical society in the town where one of the factories was located. University

professors who were experts in the field and industry experts were consulted.