Secret Prior Art

Posted Sunday, November 13, 2011.

Patents are issued by the USPTO only for inventions that are new. The patent office will not issue a patent for an invention that already exists. It occasionally comes as a surprise to an inventor who earnestly believes they have a new invention when the patent office refuses to issue the patent because another individual has already submitted an application previously, having come up with the idea completely independently.

Investing in a patent search, or an inventor performing a search independently, may prevent that from happening. But not always. An inventor may perform an extremely thorough search of publicly available sources of information, checking to see whether anyone else has applied for a patent on an idea or whether it exists on the Internet or elsewhere. But even when an inventor has searched thoroughly prior to filing, the USPTO can still reject the application where it knows another inventor has invented the same thing and nobody else has that knowledge. This unfortunate result can occur because the USPTO conducts patent proceedings confidentially.

Say, for example, a Seattle inventor named Geoff, who holds other patents, invents a widget in October of 2009. Geoff uses Google Patents ( to search patent databases looking for applications for the widget. Geoff also does a basic Google search looking for any web page that displays information about the widget. Then, Geoff engages a Seattle patent attorney to conduct a professional search and render an opinion. Finding nothing, and receiving a favorable patentability opinion from his Seattle patent attorney, Geoff concludes that his widget is brand new, and files an application for a patent in November of 2009.

Some time passes, and then Geoff’s application is examined by the USPTO. The USPTO rejects the application, stating that a different inventor named Sam filed an application for the exact same widget in July of 2009, three months before Geoff’s invention date. (In patent parlance, Geoff’s application is rejected under 35 U.S.C. 102(e) as being anticipated by Sam’s disclosure.) As it relates to Geoff’s application, Sam’s July 2009 disclosure is called “secret prior art.” That’s because of the confidential nature of patent proceedings at the USPTO. Sam’s disclosure did not become public until after Geoff had conducted his search and filed his application. Sam’s application is not just prior art, but because nobody else was aware of it other than the USPTO, it was “secret” prior art.

This might seem like an unfair result, and in fact a disappointed patent applicant sued over this in a case which was eventually heard by the U.S. Supreme Court. And in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926), the Court upheld the practice. After all, if Sam and Geoff both received a patent, then one of them would have received a patent for something that wasn’t new. In addition, they would both infringe the other.

The Court also suggested the reason for the situation was merely delay in processing in the patent office. In an ideal-world patent office, an application for a patent would be examined and a patent issued on the day of the filing of the application. And in that ideal-world, there would be no such thing as secret prior art. The second inventor, upon conducting a search, would find the first patent prior to even applying for the patent. But even though we don’t have this ideal-world patent office, the Court still didn’t believe it appropriate to create an exception in our patent laws through which two individuals could hold a patent for the same thing.

So hypothetically, if we had a patent office capable of issuing a patent on the day the office received the application, we would have no secret prior art, no 102(e) problems, and no disappointed inventors who find out someone in fact had “their idea” first. Unfortunately, this hypothetical patent office does not exist, and it actually takes a year and a half or more for most utility patent applications to receive a first examination. Due to secret prior art, it is possible for an inventor to search exhaustively, apply for a patent believing it is the first application that discloses the idea, and still be disappointed by something that was pending in a separate confidential examination process begun when a different inventor applied for the same idea.

The best defense against secret prior art? File your applications early. If you have an idea, don’t wait. Even if you conclude based upon your own searching that you have time because nobody else must be working on your idea, there could be something brewing confidentially in the USPTO. Get your application on file as soon as you can, because your filing date means everything.

Even if you are putting finishing touches on your invention, consider a provisional application for a patent to get your filing date now. A provisional application has fewer formal requirements than the non-provisional application, so it is cheaper to produce and file, but still establishes your filing date as of the day the provisional application is filed.

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