Legal Definitions - notice of prior-art references

A notice of prior-art references is a formal communication sent by a patent examiner to an inventor or company that has applied for a patent. In this notice, the examiner identifies specific existing patents, published articles, or other publicly available information (collectively known as "prior art") that are similar or identical to the invention described in the patent application.

The purpose of this notice is to inform the applicant that certain claims within their patent application may not be granted because the invention, or parts of it, are not considered new or non-obvious in light of what already exists in the public domain. The examiner uses these "prior-art references" to explain the reasons for rejecting one or more of the applicant's claims.

• Example 1: Software Algorithm

  A tech startup, "CodeGenius," applies for a patent on a novel algorithm designed to significantly speed up data processing for cloud computing. After reviewing their application, the patent examiner sends CodeGenius a notice of prior-art references. This notice cites an academic paper published five years earlier in a leading computer science journal, which describes a very similar algorithm, along with an expired patent from a competitor detailing a related data optimization technique.

  Explanation: This notice informs CodeGenius that their claims for a "novel" algorithm might be challenged because existing public knowledge (the academic paper and the expired patent) already covers aspects of their invention. The examiner is using these specific "prior-art references" to explain why some of CodeGenius's claims may be rejected for lacking novelty or being obvious.

• Example 2: Mechanical Device

  An independent inventor, David, submits a patent application for a unique, ergonomic garden tool that promises to reduce strain on the user's wrist. During the examination process, the U.S. Patent and Trademark Office (USPTO) examiner discovers two previously granted patents: one from the 1990s for a similar ergonomic handle design on a different tool, and another from the early 2000s for a tool with a comparable strain-reducing mechanism. The examiner then issues a notice of prior-art references to David, listing these two older patents.

  Explanation: This notice tells David that his proposed invention, specifically the ergonomic handle and strain-reducing features, may not be considered new or non-obvious because similar concepts already exist in the "prior art" (the older patents). The examiner is using these references to explain why David's claims for these specific features might be rejected.

• Example 3: Chemical Compound

  "MediChem Labs" applies for a patent on a new chemical compound they believe has potential as a powerful anti-inflammatory drug. During the patent examination, the examiner conducts a thorough search and finds a scientific journal article published three years prior in a prominent chemistry periodical. This article details the synthesis, chemical structure, and preliminary biological activity of the exact same compound. The examiner then sends MediChem Labs a notice of prior-art references, specifically citing this journal article.

  Explanation: The notice serves to inform MediChem Labs that their claim of inventing a *new* chemical compound is directly contradicted by the "prior art" (the journal article), which publicly disclosed the compound's existence and properties before MediChem Labs' patent application date. This reference will likely lead to the rejection of their claims for the compound's novelty.