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Z. PETER SAWICKI AND JAMES L. YOUNG | Intellectual Property Chinese Fireworks: An Explosion of Prior Art
Engage in any intellectual prop- erty conversation long enough, and you’ll eventually hear
somebody mention prior art. What’s that mean? Are we talking about works of Picasso, Rembrandt, and Rodin? Nope.
Prior art is a term of art that relates only to patent law.  ere is no concept of prior art in trademark, trade secret, or copyright law. It’s just a patent law thing.
So then, what does prior art mean?  ere is no single answer, because it di ers from one invention to another, it di ers from country to country, and it might di er over time as a country changes its patent law (like what hap- pened in the United States in 2013 under the America Invents Act). In short, however, prior art is any evi- dence that an invention was publicly available before the e ective  ling date of a patent application for that invention.
Evidence — there’s a term lawyers are familiar with! In this case, such evidence (as it constitutes prior art) can take the form of a publication or event prior to the  ling of a patent ap- plication.
Such a publication can be virtually
anything published anywhere in the world and in any language, such as an advertisement, a magazine article, a patent, a published patent applica- tion,awebpage,acollegethesis,oran owner’s manual.
An event is a bit trickier, but can be the public use or display of a product, machine or a product concept, and may be an o er for sale of something (even, as it relates to U.S. patent law, if that sales o er is not entirely public — i.e., a secret sale). Of course, it’s not as simple as all that. For instance, an in- ventor’s own publications or activities about an invention less than a year before a patent application’s  ling date for that invention may not be prior art under U.S. patent law (but will be in many countries).
Having prior art related to an in- vention can be good or bad, depend- ing on your situation. It’s bad if your client is the one that owns a patent or is seeking one and you’ve found (or been provided) prior art that po- tentially a ects the validity of those patent rights, by way of an attack on whether the invention is new or non- obvious in view of that prior art.
On the other hand, it’s good if your client is being accused of patent in- fringement or wants to adversely a ect the validity of the accuser’s patent, by trying to prove that the in-
China has only had a western- style patent system since 1985. Despite being rather new at this, more than 1.38 million patent applications were  led with the Chinese patent of ce in 2017, which is more than the combined total of applications received that year by the patent of ces of the United States, Japan, Korea, and the European Union.”
Mr. Sawicki and Mr. James L. Young are shareholders at Westman, Champlin & Koehler. Pete and Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clear- ance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans and provide customized and ef- fective strategies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki, call (612) 330-0581 or call James L. Young at (612) 330-0495. Please email them directly at either [email protected] or [email protected]

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