Legal Alert: The USPTO's Prior Art Archive and Its Implications for Defensive Publication

To grant a patent on an invention, a patent examiner must determine that the invention differs sufficiently from technology that already exists. Examiners do this by searching myriad sources for prior art that documents the state-of-the-art for the relevant technology. But this documentation is not always easy to find, especially for software inventions, where much of the prior art is outside patents and other easily-searchable sources, and instead in user manuals, technical specifications, and marketing materials.

The Patent Office acted this week, in collaboration with Google, Cisco, and MIT’s Media Lab, to make such information more available to its examiners by launching the Prior Art Archive, a database to which the public can upload prior art. The Prior Art Archive becomes the one official open-access database to which the Patent Office points its examiners. Supporters say that the Prior Art Archive will lead to stronger patents and lower litigation costs for U.S. businesses because it will help examiners avoid granting bad patents. It is also a solid step toward democratizing the patent system because it allows applicants, examiners, and the public to have access to the same information.

The Prior Art Archive also provides a superior "defensive publication" option for intellectual property owners. Defensive publication is a strategy by which an inventor places the invention into the public domain so that it becomes prior art, thereby precluding others from obtaining a patent on it. It is often used for inventions that do not merit investment in a patent, but for which the owner still wants to retain certain benefits, including securing freedom to operate and blocking competitors’ patents from issuing. Prior methods for defensive publishing were typically expensive (e.g., filing a patent application and then intentionally abandoning it) or ineffective (e.g., publishing at a website that might go away or might never be found by a patent examiner). The Prior Art Archive provides intellectual property owners a quick, easy, and free avenue for defensively publishing their inventions.

For more information about the Prior Art Archive or defensive publication as an IP strategy, contact Frank Gerratana.