You are here:

Copyright & Patents/Invention claims and prior art


QUESTION: Say an inventor invents an electonic device which can be put on top of a television and it will change the picture from colour to black and white.

Assume that in the patent, the inventor wishes to make claims for the device which goes on top of the television only, nothing to do with colour projection, or the technologies of a television etc.

When writing the patent, the inventor considers two options :

1) Listing 'television method X', 'television method y' etc as specific prior art with which the new invention is combined.

2) Just detailing an 'image projection device' as a commonly known method in the invention and proceeding to describe to some level of detail how an 'image projection device' works.

Now I am wondering if there is a potential advantage to an inventor in choosing 2 ,and additionally not going into great detail in this regard, because:

i) If the inventor does not disclose prior art, and if it so happens that the examiner does not discover the similar prior art him/herself, then it is more likely that the examiner would view the invention as inventive (novel, inventive step etc) and thus be awarded a patent.

ii) If specific examples of prior art is listed (the patents etc) and thus are instantly known to the examiner, the examiner will start looking at the prior art to see if it does what the invention says it does, and maybe the examiner will decide 'well, this patent for a television also sometimes has the option of changing the colour level in a picture, so this is not a new invention'

On the other hand, maybe in some way it can be counterproductive for patent applications to be overly generic in their descricptions of prior art, or lacking in detail. Perhaps a patent application can be rejected on the grounds that it doesnt go into enough detail about known methods, or 'punished' in that sense for not being descriptive enough.

So, in light of the above, my questions are:

1) When writing a patent, is it necessary (mandatory) to describe all the technology, steps, methods, prior art etc related with the invention, or is it only necessary to describe the technology, setps etc related with the specific CLAIMS for which protection is sought?

2) In general can it be advantageous for inventors to describe in generic terms existing prior art which is incorporated in the invention, and avoid citing specific known methods/inventions, and try to focus more on the novel characteristics of the new invention?

Thanks very much in advance for any help.


The patent laws in each country/region are somewhat different, so if you are asking about what to do in Spain or Europe, I suggest that you seek Spanish counsel.

However, this technology potentially has global application and if it is patentable, is something that you should consider seeking global protection, filing in the U.S. (which is a major market), and seek a partner, an investor, or a licensee.

I have been a practicing patent attorney in the U.S. for over 30 years and would be most interested in assisting you on this.  I may even be able to help you locate an investor, a partner, or a licensee.

In the U.S., the inventor has a legal obligation to present to the U.S. Patent Office all relevant prior art.  Failure to do so can cast a cloud on the Patent, when it issues.  No other country has this requirement. But if you file in the U.S., and present all known prior art to the U.S. Patent Office, this information will eventually become known to other Patent Offices around the world.  Accordingly, a threshold question becomes "whether or not to seek U.S. patent protection?"  This is a business decision you will have to make, but again, this is a major potential market for this technology.

I would much like to be your U.S. patent counsel on this project should you decide to seek U.S. Patent protection.  In fact, there may be advantages to filing first in the U.S.  If you have an interest, contact me directly at

I hope this helps and good luck, Dale.

 --Gerald R. Black
   Attorney and Counselor

---------- FOLLOW-UP ----------


THe invention is nothing to do with televisions of course, but it is technology related.

Yes, I would seek US patent when it came to it.

OK, I understand it is compulsory to cite prior art, but is it necessary to cite specific incarnations of prior art (the patents themselves)?



In the U.S., the inventor has an obligation to cite the most relevant prior art that he/she is aware of.  The prior art may be issued patents, patent applications, technical papers, or whatever.

If the inventor applies in Europe/Spain first, and eventually applies in the U.S., the inventor will get search reports from Europe/Spain that will need to be presented to the U.S.

If the application is filed in the U.S. first, it is possible to request expedited examination and obtain a U.S. Patent before the other global patent offices examine the Patent Application.

Also, to write a Patent Application and to only make a partial disclosure of the invention is risky.  Patent Applications are not published until 18 months after they are filed, so you can never be certain of the exact state of the prior art at the time that you file.  It is recommended that you disclose all of the preferred embodiments of the invention.  Generally speaking, while there are risks is saying too much, there are more risks in saying too little.

That's enough for this weekend, Dale.

My best regards,
 --Gerald R. Black
   Attorney and Counselor

Copyright & Patents

All Answers

Answers by Expert:

Ask Experts


Gerald R. Black


Intellectual Property Patents Global Patent Rights PCT Technology Transfer Copyrights Trademarks


Registered to practice before the U.S. Patent Office Admitted to Practice Law in Michigan, California, and Ohio

Capital University Law School - JD University of Cincinnati - BSME

©2016 All rights reserved.