Table of Prior Art – Showing Differences
Making a Table of Prior Art
Starting with a good table summarizing the prior art helps the patent drafting process run efficiently.
When inventors begin the patent process, they are often experts in the their field of invention but beginners in patent law. By contrast, the patent attorney working on claiming the invention will be learning about it for the first time. Accordingly, the patent attorney and the inventor might experience an initial language barrier. See figure 1.
Discussing the patentable aspects of an invention requires their developing a mutual understanding of the invention and how it fits into the overall landscape of the inventor’s field of technology.
One of the best tools for facilitating communication between an inventor and a patent attorney the table of prior art. This table should concisely summarize the inventor’s opinion regarding the most relevant prior art. The table should also point out how each piece of art differs from the invention.
The table of prior art serves to bridge the gap between the inventor’s technical knowledge and the patent attorney’s legal knowledge by placing the technical information (references pertaining to the art) within the context of patentability (differences from the prior art). Notably, these differences will be central to the patent office’s examination of the claims during patent prosecution because they are important to the question of obviousness.
The table of prior art provides another benefit for a lean startup trying to minimize costs. It should lessen the work required in the patent agent’s search and analysis. Providing a good understanding of the differences should also help the patent agent draft patent claims that emphasize how the invention is new and different. As we discussed in another post, successfully patenting an invention depends on articulating the differences between the prior art and the invention.
Table Showing How the Invention Differs from the Prior Art
This is an example of a differences table:
Reference How Different Reference1 Difference1 Reference2 Difference2
List Relevant Disclosures in the “Reference” Column
The inventor should list any relevant disclosure under the References column in the table. Examples of relevant disclosures include both words (publications) and things (products, prototypes, etc.). Relevant disclosures about the invention could come in virtually any form, including products, advertisements, articles, web pages, patents, patent applications, audio, video, etc. The important point is that each Reference should be a public disclosure that is relevant to the invention.
Explain How Each Reference Differs from the Invention in the “Differences” Column
In the second column, the inventor should list any and all differences between (a) the listed Reference and (b) the invention. Here’s how this would work for the generic table above:
In the table above, the inventor notes that “Reference1” differs in one way (“Difference1”) from the invention. Reference2 differs in two ways (“Difference2” and “Difference2a”) from the invention. Reference3 differs in three ways from the invention. Notably, Reference3 differs from the invention in the same way that Reference1 does, “Difference1.” Reference3 also differs in two additional ways, Difference3 and Difference3a.
Neither the style nor the appearance of the table are terribly important. The real value comes from (1) cataloging the most relevant prior art and (2) capturing all of the ways that each reference differs from the claimed invention.