Prior Art and Patentability Checklist: Searching, Grace Periods, and the Information Disclosure Statement

By Casey Scott McKay · 2023-09-03

Prior art analysis is two jobs that get confused: finding what is out there before you file, and disclosing what you know while the application is pending. This checklist separates them and runs both. It works in eleven phases: capture the disclosure history before anything else, set the filing deadline from business events, run and document the search, assess the grace period honestly, decide the provisional question, file with the record clean, then maintain the disclosure duty, gather obviousness evidence while it is gatherable, and manage the family. Each box states why it exists, the authority behind it, and the trap. A worked matter runs throughout. The companion article explains what counts as prior art and the companion guide explains how to answer a rejection built on it.

IP and Technology > Patent Counseling Transactions | Checklist | Published 3 September 2023 - Updated 10 September 2025 | Casey Scott McKay - marksy.us

Summary. Prior art analysis is two jobs that get confused: finding what is out there before you file, and disclosing what you know while the application is pending. This checklist separates them and runs both. It works in eleven phases: capture the disclosure history before anything else, set the filing deadline from business events, run and document the search, assess the grace period honestly, decide the provisional question, file with the record clean, then maintain the disclosure duty, gather obviousness evidence while it is gatherable, and manage the family. Each box states why it exists, the authority behind it, and the trap. A worked matter runs throughout. The companion article explains what counts as prior art and the companion guide explains how to answer a rejection built on it.

Keywords: prior art search, patentability search, grace period, on sale bar, public use, disclosure log, information disclosure statement, duty of candor, effective filing date, provisional application, common ownership, joint research agreement, foreign filing, absolute novelty, inventorship, search documentation, obviousness evidence, IDS timing, inequitable conduct, prosecution record

How to use this checklist

| Phase | What it covers | Who owns it | When | |---|---|---|---| | 1 | Capture the disclosure history | Counsel + business | At intake | | 2 | Set the filing deadline from events | Counsel | Immediately | | 3 | Run the search | Counsel or searcher | Before drafting | | 4 | Document the search | Counsel | With the search | | 5 | Assess the grace period | Counsel | Before filing | | 6 | Decide the provisional question | Counsel + client | Before any event | | 7 | File with the record clean | Counsel | Filing | | 8 | Maintain the disclosure duty | Counsel | Continuous | | 9 | Gather obviousness evidence | Counsel + inventors | During development | | 10 | Manage the family | Counsel | Continuous | | 11 | Annual review | Portfolio owner | Yearly |

Phase 1 comes before everything, including the invention discussion. Boxes marked [Gate] should clear before the next phase begins.

The matter. Halverton Instruments built a calibration technique for a field sensor. Engineering considered it a minor internal improvement. Sales had already quoted it as a feature, marketing had a datasheet in draft, and a graduate student on the team had submitted a conference abstract. Nobody had told counsel any of that. The boxes below show what the intake found and what it cost.

Phase 1. Capture the disclosure history

[ ] [Gate] Ask what has been published, shown, demonstrated, offered, or sold — and on what dates.
- Why. These events set the deadline and may already have foreclosed rights. The answer changes what is possible before any drafting decision is made.
- Authority. 35 U.S.C. § 102(a)(1) reaches subject matter patented, described in a printed publication, in public use, on sale, or otherwise available to the public.
- Trap. Asking only the inventor. Sales, marketing, and business development each hold dates the engineers do not know.
[ ] Ask specifically about conference abstracts and preprints.
- Why. Public accessibility, not presentation, is the trigger, and many venues post abstracts weeks before the event.
- Trap. Recording the talk date instead of the posting date.
[ ] Ask about beta programs, pilots, and customer trials.
- Why. A use by anyone not under a confidentiality obligation can be a public use.
- Trap. Assuming a customer relationship implies confidentiality. It does not without an agreement.
[ ] Ask about quotes, purchase orders, and supply agreements.
- Why. A commercial offer for sale of an invention ready for patenting triggers the bar, and a confidentiality agreement does not save it.
- Trap. Believing that because the sale was secret it does not count.
[ ] Ask about public repositories, videos, forum posts, and app listings.
- Why. "Otherwise available to the public" is deliberately broad.
- Trap. An engineer's helpful answer in a public forum, which is the most common accidental disclosure in software companies.
[ ] Ask about grant applications and funder publications.
- Why. The publication date belongs to the funder, not the applicant.
- Trap. A date nobody controlled and nobody diaried.
[ ] Record every event with a date and evidence of the date.
- Why. Establishing that a disclosure falls within the grace period requires proof, and proof is far easier now than in a declaration three years from now.
- Trap. A recollection with no document behind it.

Halverton, Phase 1. Four events surfaced. The conference abstract was posted eleven months earlier — the earliest, and the one that set the clock. The quote was nine months earlier. The datasheet was still in draft. The pilot was under a signed confidentiality agreement, which held.

Phase 2. Set the filing deadline from business events

[ ] Compute the U.S. deadline from the earliest triggering event.
- Authority. 35 U.S.C. § 102(b)(1).
- Trap. Computing from the most recent event rather than the earliest.
[ ] [Gate] Determine whether foreign rights already lapsed.
- Why. Most jurisdictions apply absolute novelty, so any public disclosure before filing generally destroys patentability there.
- Trap. Telling a client "you have a year" without the geographic qualification, which is the most expensive sentence in this practice. See Filing a Patent Internationally.
[ ] Put the deadline in the docket the same day.
- Trap. A date living in an email.
[ ] Add a standing filing question to the product launch checklist.
- Why. The events that destroy patent rights are marketing events, and the only reliable way to catch them is to put the question where they are planned.
- Trap. Relying on engineers to remember to ask legal.
[ ] Identify any upcoming event that would trigger a new bar.
- Trap. A trade show three weeks away that nobody mentioned.

Phase 3. Run the search

[ ] Define the search scope in writing before starting.
- Why. A search without a stated scope cannot be evaluated later and cannot be described honestly to a client.
- Trap. An open-ended search that costs more and covers less.
[ ] Search issued patents and published applications in the relevant classifications.
- Trap. Keyword-only searching, which misses documents using different vocabulary for the same concept.
[ ] Search non-patent literature.
- Why. Journals, conference proceedings, standards documents, technical manuals, and dissertations are all prior art and are indexed unevenly.
- Trap. Assuming the patent databases cover the field.
[ ] Search foreign-language material in relevant jurisdictions.
- Trap. Excluding an entire manufacturing region from the search because of language.
[ ] Search product documentation, datasheets, and archived websites.
- Why. Commercial disclosure is prior art and is invisible to patent databases.
- Trap. Missing a competitor's own datasheet.
[ ] Search the client's own prior work.
- Why. The applicant's earlier filings and publications are frequently the closest art, and they are the ones the examiner will find first.
- Trap. A company's own earlier patent anticipating its new application.
[ ] Note explicitly what the search did not cover.
- Why. Unpublished applications that will later publish as prior art under 35 U.S.C. § 102(a)(2) cannot be found, and public uses and sales leave no searchable record.
- Trap. Reporting a clean search as a clearance rather than as a risk assessment.

Phase 4. Document the search

[ ] Record databases searched, queries run, classifications reviewed, and dates.
- Why. The record supports the disclosure obligation and demonstrates diligence if the patent is ever attacked for inequitable conduct.
- Trap. A search living in a browser history.
[ ] Record the references reviewed and the relevance assessment for each.
- Trap. Recording only the hits, which loses the reasoning about near misses.
[ ] Distinguish the patentability search from a freedom-to-operate search in the file.
- Why. They ask different questions, cover different scopes, and produce different opinions, and conflating them misleads the client.
- Authority. See Freedom to Operate; Freedom-to-Operate Checklist.
- Trap. A client who believes a patentability search cleared them to sell.
[ ] Deliver a written assessment with a stated risk level and stated limits.
- Trap. An oral "looks clear."

Phase 5. Assess the grace period honestly

[ ] Confirm each disclosure traces to an inventor or someone who obtained it from an inventor.
- Why. The grace period is a personal shield, not a general one.
- Authority. 35 U.S.C. § 102(b)(1)(A).
- Trap. Assuming it covers a third party's independent publication.
[ ] Check for intervening third-party disclosures.
- Authority. 35 U.S.C. § 102(b)(1)(B) can disqualify a third-party disclosure where the inventor publicly disclosed first.
- Trap. Relying on this without proof of the inventor's earlier public disclosure and its content.
[ ] Assemble the proof of what was disclosed and when.
- Why. Establishing grace-period protection is an evidentiary exercise.
- Trap. No archived copy of the datasheet or the abstract as posted.
[ ] [Gate] Confirm the grace period does not rescue foreign rights.
- Trap. A filing strategy built on an assumption that does not hold outside the United States.

Phase 6. Decide the provisional question

[ ] File a provisional before any external event, as standing practice.
- Authority. 35 U.S.C. § 111(b); benefit under 35 U.S.C. § 119(e).
- Trap. Waiting for the application to be perfect while a trade show approaches.
[ ] [Gate] Make the provisional a real disclosure, not a placeholder.
- Why. A provisional supports only what it describes, judged under 35 U.S.C. § 112(a). A later claim not supported does not get the earlier date.
- Trap. Filing a slide deck and believing everything is preserved. See The Priority Chain.
[ ] Diary the twelve-month conversion deadline immediately.
- Trap. A provisional that lapses, taking the priority date with it.
[ ] Consider multiple provisionals as development proceeds.
- Why. Each captures what exists at its date, and a series preserves incremental work.
- Trap. One early provisional relied on for claims developed months later.

Phase 7. File with the record clean

[ ] Confirm inventorship by contribution to conception of a claimed element.
- Authority. 35 U.S.C. § 115; 35 U.S.C. § 116; correction under 35 U.S.C. § 256.
- Trap. Using the author list, the project roster, or the org chart.
[ ] Confirm executed and recorded assignments from every inventor.
- Authority. 35 U.S.C. § 261.
- Trap. A contractor who contributed a claimed element and signed nothing. See Employee, Founder, and Mobility IP Toolkit.
[ ] File the initial information disclosure statement.
- Authority. 37 C.F.R. § 1.97; content requirements at 37 C.F.R. § 1.98.
- Trap. Waiting until the first office action, which can cost fees or require certifications.
[ ] Check whether any common-ownership or joint-research position should be documented now.
- Authority. 35 U.S.C. § 102(b)(2)(C); 35 U.S.C. § 102(c).
- Trap. A joint research agreement executed after the effective filing date, which does not qualify. See Joint Development Agreement Checklist.

Phase 8. Maintain the disclosure duty

[ ] Treat the duty as continuing, not as a filing task.
- Authority. 37 C.F.R. § 1.56.
- Trap. A one-time IDS and no process afterward.
[ ] Route foreign office actions to U.S. counsel automatically.
- Why. Art cited abroad is material and must come in.
- Trap. A European search report that never crosses the desk.
[ ] Route art from litigation and Board proceedings involving family members.
- Trap. An inter partes review petition against a parent, with art nobody disclosed in the pending continuation. See PTAB Petition Checklist.
[ ] Route art surfaced in diligence or licensing discussions.
- Trap. Receiving a counterparty's invalidity analysis and filing it away.
[ ] Disclose generously.
- Why. Art before the examiner is harder for a challenger to win on later, and withheld material art can render the entire patent unenforceable.
- Trap. Curating the IDS to keep the file clean, which is the behavior the doctrine exists to punish.

Phase 9. Gather obviousness evidence while it is gatherable

[ ] Record what was tried and failed, with dates.
- Why. Failure of others and long-felt need are strong objective indicia and impossible to reconstruct later.
- Trap. Deleting the failed-experiment record as clutter.
[ ] Record comparative data against the closest known alternative.
- Why. Unexpected results require comparison against the closest prior art.
- Trap. Comparing against a convenient baseline, which is disregarded.
[ ] Record what was conventional at the priority date.
- Authority. Submitted later under 37 C.F.R. § 1.132.
- Trap. Asking three years on, when nobody can date anything.
[ ] Capture nexus evidence for commercial success as it arises.
- Why. Customer statements identifying the claimed feature, price premiums, and adoption timed to the feature are the proof that makes commercial success count.
- Trap. Sales figures with no link to the claimed feature, which is the most commonly rejected showing in prosecution.

Phase 10. Manage the family

[ ] Keep a continuation pending in every significant family.
- Authority. 35 U.S.C. § 120.
- Trap. Paying the issue fee first, which closes the family permanently.
[ ] Track the effective filing date of every member.
- Why. It determines which art applies and whether the pre-AIA or AIA regime governs.
- Trap. Applying AIA analysis to a pre-16-March-2013 family member.
[ ] Reconcile the IDS across family members.
- Trap. Art disclosed in the parent and omitted from the continuation.
[ ] Verify patent term adjustment on allowance.
- Authority. 35 U.S.C. § 154(b).
[ ] Docket maintenance fees.
- Authority. 35 U.S.C. § 41(b).

Phase 11. Annual review

[ ] Confirm every pending application's IDS is current.
[ ] Confirm foreign counterpart art has been routed and filed.
[ ] Confirm at least one continuation is pending in each family that matters.
[ ] Review the disclosure log against upcoming product events.
[ ] Confirm assignment records match the current entity structure.
- Authority. 35 U.S.C. § 261.
[ ] Confirm maintenance-fee decisions were made deliberately rather than by default.
- Authority. See Patent Portfolio Management Toolkit.

Halverton, outcome. The conference abstract left seven weeks of U.S. grace period and had already foreclosed most foreign rights — a fact the client learned for the first time at intake. A full application was filed inside the window rather than a provisional, because the clock was already running. The pilot's confidentiality agreement held, which preserved the on-sale analysis. The quote was the closer question and was disclosed and addressed on the record. The company now files a provisional alongside every conference submission, which costs a fraction of what this matter did.

Phase 12. The disclosure log

Phase 1 is only reliable if the information is captured continuously rather than reconstructed at intake. The disclosure log is the artifact that makes that possible, and it belongs to the business rather than to counsel.

[ ] Create one row per external event, across the whole company.
- Why. Patent deadlines are set by marketing, sales, and engineering activity, and no single function sees all of it.
- Trap. A log maintained only by the R&D team, which misses every sales event.
[ ] Record the event type.
- Why. Publication, demonstration, offer, sale, deployment, or posting. The category determines which statutory bar applies.
- Trap. A free-text description that cannot be sorted or screened.
[ ] Record the date the material became publicly accessible, not the date it was created.
- Authority. 35 U.S.C. § 102(a)(1).
- Trap. The date on the document rather than the date it went out.
[ ] Record whether a confidentiality obligation applied, and attach it.
- Why. It is the difference between a public use and a private one, and it is a factual question turning on the agreement's terms and whether it was honored.
- Trap. A verbal understanding, or an agreement signed after the disclosure. See Confidentiality Agreement Checklist.
[ ] Attach the artifact itself.
- Why. Establishing what was disclosed is as important as establishing when, and the grace-period analysis needs both.
- Trap. A link to a page that has since changed.
[ ] Record who authorized the disclosure.
- Trap. No accountability, so the same category of event recurs.
[ ] Review the log monthly against pending and contemplated filings.
- Trap. A log that exists and is never read, which is worse than none because it creates a record of knowledge without action.

Phase 13. Non-U.S. specifics

The filing map has its own prior-art rules, and applying U.S. assumptions abroad is the most common source of lost foreign rights.

[ ] [Gate] Confirm the absolute-novelty position for each target jurisdiction before any disclosure.
- Why. Most systems have no general grace period, and a pre-filing disclosure is usually fatal there.
- Trap. Assuming a U.S.-style grace period exists somewhere because it exists here.
[ ] Check whether a narrow exception applies.
- Why. Some jurisdictions excuse disclosure at an officially recognized international exhibition, or disclosure resulting from an evident abuse in relation to the applicant. These are narrow, formal, and frequently require a declaration filed with the application.
- **Trap. **Relying on an exhibition exception without the official designation and the required formalities.
[ ] Confirm the foreign filing license position before filing abroad first.
- Why. Inventions made in the United States generally require authorization before foreign filing, which the filing receipt commonly grants; filing abroad first without it carries real consequences.
- Authority. 35 U.S.C. § 184; penalties at 35 U.S.C. § 185.
- Trap. A distributed engineering team filing through a foreign parent's counsel without checking.
[ ] Diary the Paris Convention twelve-month deadline separately from the PCT thirty-month deadline.
- Trap. Conflating the two, and missing the earlier one.
[ ] Note that self-collision rules differ.
- Why. An applicant's own earlier application may be citable against a later one in some systems in ways the U.S. common-ownership exception at 35 U.S.C. § 102(b)(2)(C) would prevent here.
- Trap. A filing sequence designed for U.S. rules that creates a self-collision abroad. See International Patent Toolkit.

Phase 14. Cost and sequencing

| Step | Relative cost | When | |---|---|---| | Disclosure intake questions | Negligible | Every matter, first | | Disclosure log, maintained | Low, recurring | Continuous | | Knockout patentability search | Low | Before drafting | | Full patentability search | Moderate | For significant filings | | Written patentability opinion | Moderate | With the search | | Provisional application | Low | Before any event | | Non-provisional application | Substantial | Within twelve months | | Information disclosure statements | Low each, recurring | Continuously | | Reconstructing dates years later in a declaration | High | Avoidable entirely | | Losing foreign rights to a pre-filing disclosure | Total | Avoidable entirely |

The ratio worth stating. The disclosure intake takes fifteen minutes and a provisional costs a small fraction of a full application. The two together prevent the outcomes at the bottom of the table, which are not expensive so much as unrecoverable — there is no remedy for foreign rights lost to a trade-show demonstration, at any price.

And the sequencing rule. Disclosure history, then deadline, then search, then provisional if any event is near, then drafting. Practitioners who start at drafting produce better applications for inventions that may no longer be patentable.

Phase 15. Sector-specific screens

Four sectors carry disclosure patterns the general checklist does not anticipate.

Universities and research institutes

[ ] Tie a provisional to every manuscript submission, as a standing rule.
- Why. Publication is the institutional purpose and will not yield to patent timing; the only workable answer is filing first, which does not delay publication at all.
- Trap. A review process researchers route around by posting preprints.
[ ] Diary preprint servers, abstract postings, and thesis deposits separately.
- Trap. Treating the journal publication date as the trigger when a preprint went up months earlier.
[ ] Confirm inventorship against conception rather than authorship.
- Authority. 35 U.S.C. § 116; correction under 35 U.S.C. § 256.
- Trap. Copying the author list onto the declaration.
[ ] Paper multi-institution collaborations before the work, not after the result.
- Authority. 35 U.S.C. § 102(c) requires the agreement to be in effect on or before the effective filing date.
- Trap. A retroactive agreement, which does not qualify.

Life sciences and diagnostics

[ ] Track clinical trial registry postings and results disclosures.
- Why. Registry entries are publicly accessible and dated, and they frequently describe the invention.
- Trap. A protocol posting that predates the filing by a year.
[ ] Track regulatory submissions that become public.
- Trap. An advisory committee briefing document published by the agency.
[ ] Capture comparative data against the closest alternative during development.
- Why. Unexpected results are the strongest objective indicium in unpredictable arts and require the right comparator.
- Authority. 37 C.F.R. § 1.132.

Software and internet

[ ] Treat public repositories as publications from the moment of visibility.
- Trap. A repository briefly made public and reverted, which still has a date.
[ ] Screen engineering blog posts, conference talks, and forum answers.
- Trap. The most common accidental disclosure in the sector, and the least policed.
[ ] Check whether an app store listing or release note describes the invention.
- Trap. Release notes written by engineers, published automatically.

Hardware and manufacturing

[ ] Screen supplier and contract manufacturer engagements for confidentiality coverage.
- Why. A production supply agreement can be an offer for sale; a development engagement under obligation generally is not.
- Trap. A tooling order that reads as commercial supply.
[ ] Screen trade shows, industry demonstrations, and customer site trials.
- Trap. A booth demonstration, which is the single most common foreign-rights-ending event in this sector.
[ ] Confirm whether experimental use applies to any field trial.
- Why. The doctrine is real and narrow, turning on the primary purpose, control over testing, records kept, whether payment was received, and confidentiality.
- Trap. Calling a paid deployment a trial.

Phase 16. Building the search into the drafting decision

A search is worth commissioning only if its result can change what you do, and most searches are ordered without anyone deciding in advance what result would change anything.

[ ] State, before the search, what finding would stop the filing.
- Why. It converts the search from a formality into a decision input, and it makes the report readable against a standard.
- Trap. A search commissioned because it is customary, reviewed for reassurance, and filed away.
[ ] State what finding would narrow the claims rather than stop the filing.
- Why. The most common useful outcome is not a bar but a redirection — the broad concept is taken and the specific mechanism is not.
- Trap. Treating close art as a failure rather than as a drafting instruction.
[ ] Have the drafter read the closest three references in full before drafting.
- Why. Claims drafted against the actual closest art are dramatically better than claims drafted from a disclosure and later amended around art.
- Trap. A search report that reaches the file but not the drafter.
[ ] Draft the background section against what the search found.
- Why. A background that acknowledges and distinguishes the real state of the art supports both the eligibility argument and the obviousness argument later.
- Authority. See Patent Eligibility Checklist.
- Trap. A background written before the search, describing a field the search shows does not exist.
[ ] Record the decision and the reasoning.
- Why. It is the contemporaneous evidence of diligence if the patent is ever attacked, and it is the institutional memory for the next filing in the family.
- Trap. A decision made in a phone call and never written down.

A closing note on who owns which phase. Phases 1, 2, and 12 belong to the business, and pushing them there is what makes everything else affordable — the disclosure log maintained by a product operations person costs almost nothing and prevents the losses that no amount of legal work can recover. Phases 3 through 10 belong to counsel. Phase 11 belongs to whoever owns the portfolio budget, because that is the person who can act on what the review finds. Organizations that leave all of it with counsel discover the disclosures too late, because counsel is not in the room when the trade show is planned or the abstract is submitted.

The single organizational change with the highest return in this entire checklist is adding one line to the product launch template: has a patent filing decision been made for anything disclosed at this event? It costs nothing, it reaches the people who create the deadlines, and it catches the events that counsel would never otherwise hear about until intake.

Organizations that add it typically find two or three unreported events in the first quarter alone, which is a fair measure of how much was going unseen before.

Key Authorities at a Glance

| Authority | Proposition | Phase | |---|---|---| | 35 U.S.C. § 102(a)(1) | Publication, public use, on sale, or otherwise available | 1 | | 35 U.S.C. § 102(a)(2) | Earlier-filed applications that later publish | 3 | | 35 U.S.C. § 102(b)(1) | The one-year grace period and its limits | 2, 5 | | 35 U.S.C. § 102(b)(2) | Disqualification, including common ownership | 7 | | 35 U.S.C. § 102(c) | Joint research agreements | 7 | | 35 U.S.C. § 103 | Nonobviousness | 9 | | 35 U.S.C. § 111(b) | Provisional applications | 6 | | 35 U.S.C. § 112(a) | Support; what a provisional actually preserves | 6 | | 35 U.S.C. § 115 | Inventor's oath or declaration | 7 | | 35 U.S.C. § 116 | Joint inventors | 7 | | 35 U.S.C. § 119(e) | Benefit of a provisional | 6 | | 35 U.S.C. § 120 | Continuations and co-pendency | 10 | | 35 U.S.C. § 154(b) | Patent term adjustment | 10 | | 35 U.S.C. § 256 | Correction of inventorship | 7 | | 35 U.S.C. § 261 | Assignment in writing | 7, 11 | | 35 U.S.C. § 41(b) | Maintenance fees | 10 | | 37 C.F.R. § 1.56 | Duty of disclosure, continuing | 8 | | 37 C.F.R. § 1.97 | IDS timing | 7 | | 37 C.F.R. § 1.98 | IDS content | 7 | | 37 C.F.R. § 1.132 | Declarations traversing rejections | 9 |

The five things people get wrong

One: they ask about the invention before asking about disclosure. The disclosure history sets the deadline and sometimes ends the conversation, and it should be the first question at every intake rather than a detail collected later.

Two: they tell clients "you have a year" without the geography. The grace period is a United States rule. Most of the world applies absolute novelty, and a trade-show demonstration before filing forecloses those rights permanently. This single omission costs more foreign patent rights than any other advice given in this field.

Three: they file thin provisionals. A provisional preserves what it describes and nothing more. A slide deck filed as a provisional buys a date for the slide deck.

Four: they treat the IDS as a filing task. The duty runs the entire time an application is pending and reaches art from foreign counterparts, litigation, Board proceedings, and diligence. Every economy taken here is a liability held for twenty years, and the remedy for a breach is unenforceability of the whole patent.

Five: they let the obviousness evidence evaporate. Failed experiments, comparative data, and what was conventional at the priority date are all cheap to record contemporaneously and nearly impossible to reconstruct in a declaration years later. See Responding to Novelty and Obviousness Rejections.