When we do patent searches we mostly search issued patents and patent applications.  However, the law allows for a much broader definition of prior art.  A story which may be apocryphal  as reported in Wikipedia illustrates this point.

According to the article an Inventor devised a method of raising sunken ships which involved filling them with ping pong balls to  provide flotation.  As the story goes, when the inventor went to patent his idea , it was denied by the patent office because it had already been invented BY DONALD DUCK.  The clip from the comic strip shown above indicates how Donald used the same technique to raise a sunken sailboat.  Since the method was already known, it was not patentable.

Wikipedia says it can't confirm this story and I'm also skeptical because in my many years of getting my own patents and helping others get theirs, I have almost never seen a patent examiner cite anything except a patent as prior art.

However, I have seen some unusual citations which are patents.  Prior art doesn't just have to be a US patent.  It can be anyone elses patent from anywhere in the world and it doesn't have to be in English.   I once saw a Swedish patent invoked in an Office Action, and we had to get it translated to find out why.

However, even if a patent examiner doesn't cite a comic strip, someone who wants to infringe your patent might well do so.  Since any prior art of any source from anywhere which existed before the patent application will invalidate it,  Donald Duck, or any other Comic will do.

Incidentally  Disney is a vigorous defender of their intellectual property rights.  The law that extends copyright to 75 years after the death of the inventor is often called "The Micky Mouse rule".

Another rarely cited source is Journal articles.   Any article in a published journal anywhere in the world can be cited in a patent case.  One common problem particularly with University inventors is that they have published a paper describing the principles behind their invention before the patent application  is filed.

If that happens, the inventors own journal article can sink the patent.  That is why universities often warn their staff not to publish anything they think might be patentable without consulting the patent department first.  That is good advice which is too often ignored.

If you need help finding out if your invention is patentable or whether Donald Duck has got there first , contact us at BML.  We can help.

For more information write to rblazey@ittrifecta.com or call (585) 520-3539

 or call us at (585) 520-3539

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