KnowThis Tutorial: Marketing Method Patents

Tutorial Contents

Page 9 of 15

1. Researching Prior Art
The patent process should begin by first making sure the effort is worth the inventor’s time. As discussed in our article, Marketing Method Patents, a business method must meet certain requirements for being novel, useful and non-obvious. For the novel requirement the USPTO requires that applicants do their homework to make sure that no one has come up with this process in the past, whether it was patented or not. Any previous evidence (called prior art) that the invention “was known or used by others in this country, or patented or described in a printed publication in this or a foreign country” before a patent application is filed may make the invention unpatentable. As part of showing that the business method is novel, the applicant needs to spend considerable time searching the USPTO database as well as sources outside the U.S. patent database to see if such an idea was previously made public. The USPTO provides a list of sources its examiners will use to make their own determination of whether the invention is novel. This list may also help the inventor as the search for evidence of prior art.

Besides determining whether an idea is novel, the prior art research is also important for determining why the applicant’s idea is novel. That is, the applicant does research to find out how others have tackled the problem. Hopefully what is learned is that the applicant’s business method tackles the problem in a different way and thus is novel. As we will show later, discovering this may make it easier to “sell” the uniqueness of the invention to the person who will examine the application.

Finally, to determine whether an invention is unique, prior art research has another very important contribution to the application process – it may provide a template for writing a patent application. While searching will hopefully not be fruitful in producing evidence of the inventor’s idea, it may show many other patents in a similar vein that an applicant can use to their advantage when determining how to write the patent application. In particular, previous patents can provide guidance on how to write claims and how to prepare drawing (see more below).

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