The Prior Art Reporter offers the collective  experience of almost 20 years searching for key prior art in traditional and obscure venues, as well as commentary on significant prior art as it is evaluated in patent prosecution and litigation.

Secrets of Non-Patent Prior Art

1.  Locating prior art is a ‘degrees of separation problem’: you are separated from your art by some number of people and connections.

2.  Build a timeline  –  Timelines aid visualizing the evolution of technology and locating the sweet spot of your prior art.  Build multiple timelines in parallel (looking like a sheet of music) each line tracking a separate aspect.

3.  Get on the phone — Don’t fear cold-calling. If the patent identifies people, or papers cited look promising, locate and contact the authors to see what materials they maintain, or if they can refer you to others.  One search led me to the cell phone number of a CEO, was on a golf course when I called – he was very helpful pointing me to the right person.

4.  Find the packrats and hoarders – those that build their own collections, either from their career, or interest.  These folks exist, but they don’t publicize their collections, it isn’t indexed, and they may not appreciate visibility.  Other sources are from estate sales and antique stores, but this is better for proactively building a collection for future use.

5.  A by-product of the non-patent prior art search is identification of potential testifying experts.  Sign ‘em up.

6.  Accused ‘infringers’ could have their own prior art – Long established companies, especially those with formal research groups and product evolution, will possibly have their own prior art to current products.

7.  Days and weeks matter — Relevant prior art dated mere days or weeks after the effective filing date for a patent is frustrating.  This is instructive for parties contemplating filing patent applications that the time you delay filing can come back to haunt later on with prior art dated a few days earlier. There are instances where the prior art is just a short time after the effective filing date.  In one instance the relevant non-patent art was an article in a conference proceeding.  Presumably publication date is the conference date.  That date didn’t predate the priority date, however I researched the date submittals were due for peer review. That date was before the priority date, and under the right circumstances, that could count as prior art.

8.  Establish a company historian. One search some years ago led me to the AT&T Corporate Historian. This was an actual position.

9.  Multiple path searchers and searchers; don’t rely on only one modality.  Different searchers don’t get identical results.  They come to the problem with different personality, background, preferences in search sources and search techniques.  An important search will use more than one searcher or company to get better coverage.

10.  Always be on the lookout for prior art.  Some searchers continue a search under the understanding the likelihood of similar requests in the future.  Be opportunistic: visit museums or antique stores and flea markets as you travel. Have a camera to take pictures of artifacts you encounter to aid in recall (easy to do with smartphones.)

11.  Be aware domain taxonomies, such as Library of Congress Subject Headings, Medical Subject Headings (MeSH), ACM Computing Reviews Categories.  Build a vocabulary of synonyms with which to vary search queries.  Here are some samples:

    1. Memory, storage, disk, array, RAM, DRAM, flash
      1. Signal, indicator, message, bit, semaphore, indicia, flag

      2. Display, window, CRT, VT100, terminal emulator

      3. Connected, attached, communicates with

      4. Module, program, server, layer, client, abstraction, applet, application


12.  Don’t burn bridges with former employees; cultivate future cooperation when they do move on.  Former employees are a resource of expertise, institutional and historic knowledge of the company and industry.  It’s better to have these paths available in the future.

13. Computer source code may be in the disclosure.  Some patents have source code either in the disclosure itself, or attached as an Appendix.  Search for ‘microfiche.’

14. When acquiring artifacts – acquire more than one. Acquiring an artifact may be for:

  • for review

  • reverse engineering

  • demonstrations

  • one for your own collection of prior art.

15. When acquiring artifacts – watch for dependencies. In other words, what else do you need to make a working example?

  • power cords

  • unusual connectors

  • media i.e., an 8″ floppy disks

  • does it need repair?