Top 5: Unexpected Places to Find Prior Art
Posted on Fri, Mar 25, 2011
By Catherine Zielinski
Although Google, Google Patents and the USPTO’s electronic databases are commonly declared favorite research tools by patent researchers throughout the world, an important niche of knowledge is imperative not to forget: the world of non-digitized information. This week, the Top 5 Unexpected Places to Find Prior Art have been gathered from the best and brightest AOP Study Submissions – from non-digitized favorites like old manuals, to the interesting world of looking for prior art in non-related industries.
1) Old Textbooks
Old textbooks are treasure chests of prior art. In 2009, Merck was suing Teva for patent infringement to prevent Teva from making a generic version of their product. The winning researcher of the study to find prior art for this case, Study MRK 473, was a graduate student who went through earlier editions of old textbooks and was able to demonstrate what a POSITA, that is a person of ordinary skill in the art, would have known about the chemical properties of 2 related compounds. The winning art can be viewed here. Article One Partners has also received other textbook submissions in pharmaceutical, medical device and cryptography studies. Moreover, AOP has purchased old textbooks from Ebay to conduct research for particular studies – if your home library or school doesn’t keep old textbooks, consider looking on Ebay!
2) Manuals – Old and New
Filled with pages of instructions and explanations of specific technology, manuals hold a variety of critical clues to prior art. Researchers who have bought manuals offline have solved various studies by finding crucial prior art in these pamphlets. A great example of where this strategy would work is the domain of cell phones – manuals for earlier models of cell phones and cell phone technology are indispensable sources of patent history!
3) Non-digitized Photos and Figures
For study MED 081 on “Negative Pressure Wound Therapy” a researcher sent in an article concerning the treatment of surgical wounds. Although at first glance such an article didn’t appear to relate directly to the material at hand, the second page revealed a drawing directly related to the study. Non-digitized photos and figures are vital because a computer can’t search through these pictures and graphics, and thus they aren’t in a universally accessible domain. Moreover, if one had been searching for “wound therapy,” through Google, an article discussing surgical wounds may often be discarded.
4) Other Industries
Searching through references on non-related industries can be a nontraditional way of locating prior art. In study MOP 205, “Monitoring/Controlling Operational Performance of a System,” a computer patent was invalidated by literature from the aerospace industry. Semantically it was different, but technologically it related directly to that patent – and this piece of information won the researcher the study. Although it comes naturally to look exhaustively through references related directly to the technology identified for a particular study, keep your eyes and ears open – information can come from the most unexpected places.
5) Data Tables
Data Tables from old research magazines and textbooks top off our Top 5 Unexpected Places to Find Prior Art. In late spring of 2009, a Researcher was attempting to crack Study LLY 269, related to the drug Cymbalta. The Researcher hunted through different tables of data and found the same data point the inventor had used, to establish the equivalency of certain compounds and provide a path of invalidity for the patent. By finding that particular data point, Article One Partners was able to establish that the prior art reference had disclosed a chemical with the same important property.