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I am working on software process patent. There is a significant body of prior art, which I believe is inferior. But proving that would require to go into a lot of technical details of prior art. Should I do that in my application or just state believe in my solution superiority?

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At the time of filing your patent application, it is not mandatory to state the difference between your invention and the prior art that you have, in the application. You may, however, have to differentiate your invention from the prior art while filing a response to an Office Action issued by the Examiner if the Examiner cites that particular reference questioning the patentability of your invention. The Examiner would be interested in the novelty and non obviousness/inventiveness of your invention in light of the above mentioned prior art, and describing how your solution is superior may further your cause. However, as a duty you may disclose this particular piece of prior art in an Information Disclosure Statement (IDS) to the PTO. You may disclose any kind of relevant (material) information to the PTO which you may come to know of while or after filing the patent application, through the IDS to avoid facing negative consequences later. For details on the duty to disclose relevant information to the PTO and the Information Disclosure Statement (IDS), you may visit http://www.invntree.com/blogs/duty-of-disclosure-in-a-patent-application

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Adding to the answer, applicant doesnot need to say about priorart at the time of drafting application but he may submit IDS- information disclosure statement. In some instances if prior art too close as you feel best would be characterize or identify atleast one example wherein you get clear articulated result to show significant superiority.

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No - the current trend is not to even mention prior art. Importantly, there is no requirement to be better that what was already done. If it isn't better, you might have a hard time selling it, but that's your concern, not the UPTO's. If it is novel and not obvious, you can get a patent. Explaining how it differs from what was done in the past, and why that difference is non-obvious will be needed. But it will be in response to the examiner saying "I think putting the concepts of X and Y and Z put together somehow makes yours obvious."

We no longer mention prior art for several reasons. One is the concept of prior art itself. There are requirements a document must meet to technically be prior art. But if you say it is prior art then it is - even if it wouldn't otherwise qualify. If you bash a particular thing from the past over a feature and you get a patent, a judge might say that anything with that feature can't possibly be your thing and is outside your claims even if it otherwise would be covered.

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  • So I shouldn't even mention prior art in description but must refer to it in IDS? – Pol99 Nov 26 '14 at 1:33
  • Anything you know about that might contribute to a rejection needs to be on an IDS. When in doubt, include it. The current thinking on not mentioning specific prior art includes a concern that you will be hit with "inequitable conduct" if you ever get to court. The senario is you say X can't do Y but it can. Or you say X never mentions Z, but it does. Anything you say about prior art will be used against you. The good news is the most likely time the validity of your patent will challenged is ten years from now, and the words you write today will be judged by the law and mood prevailing then. – George White Nov 26 '14 at 7:40

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