First to File: Patents for Today's Scientist and Engineer

Chapter 2Prior Art before and after the AIA: Two Standards Compared

Priority disputes, the subject matter of Chapter 1, are conflicts between patents or patent applications (or between a patent and a patent application) in a common jurisdiction (such as the United States) that claim the same invention, and the resolution of a priority dispute is a determination of which party will be granted the patent (or which party’s patent will be enforceable). A subject separate and distinct from priority is patentability, which focuses on the invention itself rather than when, in what form, or by whom a patent application is filed. To be patentable, an invention must be novel, useful, and nonobvious. Of these three requirements, usefulness (utility) is easily met and rarely a matter of dispute, but novelty and nonobviousness have acquired complex definitions embodied in extensive sets of rules and parameters that have evolved with the advancement of both technology and communications first in the Industrial Age and then in the Information Age. Novelty and nonobviousness are the subjects of Chapters 6 and 7 of this book, respectively, and both refer to comparisons between an invention and the “prior art.”

2.1 Prior Art and the First-to-File Rule

“Prior art” is defined as everything that an invention can be compared to when determining whether the invention is worthy of a patent. Prior art thus goes beyond patents and patent applications that raise priority disputes to include a large ...