[Business Today] How not to reinvent the wheel – part 1

A Cautionary Tale

While celebrating the Lunar New Year with his relatives and dodging questions from nosy aunts on when he would be finding a mate to settle down with, Eddy Sun had a sudden flash of inspiration when he saw a Chinese firecracker explode into thousands of red paper flecks.

Three caffeine-fuelled, sleep-deprived days later, he comes up with a working prototype of a disposable self-popping popcorn tin that is capable of popping corn kernels using heat generated by an exothermal core inside the tin. All the user has to do is to pull a tab at the bottom of the tin to start the chemical reaction and wait for the popcorn to pop out.

Sensing that his product would be a hit since popcorn snacks sold in stores tend to be of poor quality and would go stale easily, he immediately proceeds to have a patent application filed for his popcorn tin without first conducting a prior art search. “Prior art searches are a waste of time and money,” he thinks, “and no way does anybody have the brains to come up with such a brilliant invention!”

Fast-forward to 2 years later where he receives a communication from the patent office explaining that his application is not patentable because of an article that was published in a magazine 10 years ago about a boy named Tetsu Lau who won a young inventor’s award for a self-popping popcorn device made from a used soft drink can. In the article, the young inventor explains how his invention heats popcorn using an exothermic core and how he came up with the invention as he wanted to enjoy freshly popped popcorn but was banned from the kitchen after his mother caught him trying to distil ethanol to make rocket fuel using the cooking range.

Eddy Sun’s product became a hit as he predicted, but since he was unable to obtain a patent, he was powerless to stop his competitors from wedging themselves into the market with their imitation popcorn tins.

So what is prior art? Why was Eddy Sun’s application objected to? How do you not reinvent the wheel? Will Eddy Sun ever get married? We’ll address these questions (well, maybe not that last bit), and more in this two-part article series.

What is Prior Art?

According to the Malaysian Patents Act, prior art is defined as “everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or in any other way, prior to the priority date of the patent application claiming the invention” and this includes the contents of any Malaysian patent application or patent which have an earlier priority date than the application in question.

The patent system rewards the inventor for contributing towards innovation and progress by granting the inventor a monopolistic right to exclude others from performing commercial activities relating to his/her invention in exchange for disclosing this invention to others.

In order to obtain this capitalistic superpower, the invention must fulfil patentability requirements such as novelty, inventiveness and industrial applicability. How a patent office determines whether an application for a patent fulfils these criteria is by way of comparing what has been disclosed in the application with the teachings of the prior art.

The existence of prior art dealing with the same subject matter as the invention can be problematic for the inventor, since it means that the invention is not novel or inventive with regard to that prior art. In the earlier fictional tale, the article on Tetsu Lau was regarded as prior art against Eddy Sun’s application because Tetsu Lau explained how his invention worked, which was essentially the same Eddy Sun’s, worked.

While Eddy Sun’s tale is fictional, there really are inventors who file patent applications without the benefit of a prior art search, only to have the application abandoned at the examination stage because of novelty objections that could not be overcome.

Like Eddy Sun, many inventors tend to harbour notions such as “I’ve never seen anything like this in the market,” or “Nobody has done this before,” mistakenly assuming that they are the first to arrive at a solution to a known problem and underestimating the importance of conducting a prior art search.

Unfortunately, this is rarely the case, as brilliant minds of the past may have attempted to solve tomorrow’s problems, however, the solutions that they came up with were probably not practical at that time or did not gain traction. Most of these brilliant minds will publish their work for the benefit of the research community, so what happens a few years down the line is that those who cannot be bothered with prior art searches become condemned to reinvent the wheel.

In the present situation where the economic outlook is not very positive, it would be completely understandable that inventors would seek to reduce costs where possible. Unfortunately, since prior art searches are perceived to be an additional expenditure and hassle that can be done away with, it also means most inventors tend to forgo conducting prior art searches to have more money for the more costly patent drafting and filing process.

Prior Art Searches Help Save Money

Patents cost money and patent agents, even more. While official fees for filing and prosecuting patent applications will generally not cost more than RM 1,500-2,000, the fees for engaging a qualified patent professional are significantly higher (Sales pitch: KASS’s fees are VERY competitive, totally not expensive at all!). It is true that conducting a prior art search means spending more money, but in a lot of cases, they can save the inventor from spending unnecessarily on an application that will turn into a dud.

Conducting a prior art search before deciding to draft and file a patent application means that if the search does indeed identify a prior art that will bar an application from receiving a patent, the inventor can choose to quit without spending more money on drafting and filing an application which will have no reasonable chance of success. The last thing an inventor would want to wind up in is a situation where significant money has been spent for an application that has to be abandoned because of prior art that was not identified prior to filing the application.

While prior art searches can help prevent the inventor from dumping their money into a lead zeppelin, they can do more than that, so look out for our next article as we explore the benefits of conducting a prior art search.

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Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.