How To Use Prior Art To Sell Your Invention

So, you had an idea for a new invention and filed intellectual property to establish your ownership. At some point, whether you’ve filed a provisional patent application or obtained a patent, others — like potential investors as well as licensees — will want to see what you actually own before agreeing to invest in your technology. They will search for prior art, and reference it as reason not to pay you.

This is true of any company worth their salt, large or small.

First things first: What is prior art? Evidence that your invention is not new. When you have an idea for a new product, the first thing you should do is study the marketplace, because it might already exist. Then you should search for prior art. Has the invention been described in a patent? Probably.

Please note that prior art is not limited to patents. If the invention was publicly disclosed in a scholarly publication, an article, or on a commercial site like Amazon, for example, that too constitutes prior art.

There is immense value in learning how to search for prior art. (I explain why here.) Depending on what you find, you can always hire a professional to conduct a more in-depth investigation. Because of the inherent conflict with patent attorneys, I recommend using an independent third party. Take advantage of the many excellent free educational resources provided by the United States Patent and Trademark Office to help you.

Please, don’t go crazy looking for every piece of prior art. Finding all of it is impossible, and thus not a very effective use of your time.

You will find prior art — I guarantee it. Don’t let that worry you. What does worry me is if the product is already on the market. Even with prior art, there are almost always going to be workaround variations, resulting in opportunities for you.

Here’s how I use prior art as a selling tool.

First, you must know as much about the prior art as you can. At the least, the most obvious prior art. Your job is to overcome it. If you don’t know what the prior art is, that’s impossible.

When asked about it, reply: “Yes of course there’s prior art.”

Never avoid this question! In fact, I absolutely love being asked about it, because prior art actually allows me to sell my idea.

Continue: “But we all know that this invention is not on the market yet, regardless of the prior art. The prior art does not address obstacles that must be overcome to bring this invention to market. My provisional patent application/my patent advances the prior art so that this invention can actually be commercialized.” Then I explain how.

I have relied on this strategy over and over again when negotiating licensing agreements.

When prior art exists for an invention, but the invention never reached the market, most likely there was an issue. If your intellectual property solves that problem, it’s impossible for someone to argue that it doesn’t have merit. They may try, but you’ve made it more difficult for their argument to hold water.

Think back on the patents you’ve read. How many describe a method of manufacturing? In my experience, very few do. This is the opportunity I’m referring to.

This is also the strategy I used to license my packaging innovation. Two patents that were very old described my initial concept exactly. But I had never seen a rotating label in reality, because no one knew how to manufacture one. The prior art described a concept only. The patents were weak, in other words. Studying them closely provided me with what I needed, which was a point of difference.

I figured out how to produce a label that spun, and obtained many patents on manufacturing techniques as a result.

When I defended my patent portfolio against the toy company LEGO in federal court, I explained to the judge that my invention was not new. In fact there were two patents on it, but they didn’t include any manufacturing techniques. My patents detailed how to make this invention. They described the machinery (apparatus) and the process (method) required to actually produce a rotating label.

We settled two weeks before trial.

Because I knew the prior art, I was able to explain my point of difference. The prior art didn’t hurt me. I didn’t run from it. I didn’t give up. I made it my number-one selling tool. You can too.