How to Overcome Prior Art with Creativity Tools


When it comes to invention and patents, overcoming prior art during patent examination can be a significant obstacle for inventors to get patent protection. Despite this, inventors and patent counsel can triumph over the challenges posed by prior art by harnessing the power of their creativity and using tools that facilitate systematic invention. This article investigates how combining “Creative Thinking Tools” and “Systematic Thinking Tools” can assist inventors and patent counsel navigate the complex process of overcoming prior art. 

Definition of Creativity Tools

Tools for creativity are methods that encourage imaginative thinking and make it easier to develop original ideas. One such method is associative thinking[1], which refers to generating different ideas than we normally would have. These creativity tools can be used to help overcome prior art. For instance, when confronted with prior art that discusses aspects of our patent application that has an independent claim of six elements, one would “associate” each of the six claim elements of our patent application to the prior art and see how many options are produced, where each option is then evaluated back in our specification for how closely our specification relates to the options. This way, a complete list of overlaps is assessed versus just doing this in an unstructured (albeit knowledgeable) way.

[1] Episode 4 – Types of Creativity: Associative Thinking

Definition of Systematic Thinking Tools

Tools for systematic thinking provide a methodical approach to problem-solving, enabling inventors to analyze difficult challenges more effectively and zero in on the most effective solutions. An illustration of this would be to create a “systematic definitions map” of each claim element in a first column against their definitions from our specification in a second column and create two new columns for each prior art source,   where the element and its definition are also defined, where the rows closely match the content of each other. By doing this systematic mapping, one can easily and completely see how close the prior art reference is to our patent application claims. This example is easily automated in software to create the “systematic definitions map” instantly.

Understanding Prior Art and Overcoming It

The term “prior art” refers to information that is already known or has been made public pertinent to an invention before an application for a patent is filed. Getting around obstacles posed by existing prior art requires creating examples that set the new invention apart from what is already known. It requires inventors and patent counsel to address the limitations of prior art or find alternative approaches to solve the same problem.

Using the Systematic Thinking Tool “Inventing Around Checklist for the Prior Art”

The “Inventing Around Checklist for the Prior Art” is a systematic tool that aids inventors and patent counsel identify alternative solutions while circumventing existing prior art. For example, when facing prior art related to a wireless charging system, the checklist may prompt an inventor and patent counsel to explore alternative charging methods such as radio frequency or ultrasound. If invent around are found related to the prior art, these might be able to be added to the specification and claimed or could be a source for a new patent application where the probability of getting around the prior art is a lot higher. The Invent Around Checklist we use has eighteen invent around techniques.[1]

[1]  Episode 28 – How to Invent Around Any Patent or Technology

Utilizing the Systematic Thinking Tool “Cross Mapping”

The “Cross Mapping” technique allows inventors to evaluate the synergistic strength of their claims against the prior art.  

Cross-mapping of patent claims refers to comparing and aligning the claims of different patents to identify similarities, overlaps, or differences between them. Patent claims are the specific statements or descriptions within a patent that define the scope of protection granted to the inventor.

Cross-mapping patent claims are typically performed to assess a patent application’s novelty and inventive step or to analyze an existing patent’s potential infringement or validity. By comparing the claims of different patents, one can identify whether a new invention is novel and non-obvious or overlaps with existing inventions.

Cross-mapping patent claims involve carefully analyzing the language, terminology, and scope of the claims in different patents. It requires expertise in patent law and technical knowledge of the subject matter and often involves using specialized patent databases or software tools for efficient searching and comparison.

Cross-mapping can be performed manually by patent attorneys, examiners, or relevant field experts. Alternatively, automated tools and algorithms may assist in the process, particularly for large-scale analysis or when searching for prior art.

Cross-mapping patent claims results can provide valuable insights for inventors, applicants, examiners, and legal professionals involved in patent-related matters. It helps determine an invention’s novelty and inventiveness, identify potential infringements, conduct patent landscape analysis, and make informed decisions regarding patent filing, licensing, or litigation.

Using the Systematic Tool “Morphological Matrix” to Interpret Claim Language

The “Morphological Matrix” is a systematic tool to analyze claim language and its implications concerning prior art coverage. For instance, if prior art exists for a software algorithm, the morphological matrix can assist inventors and patent counsel in identifying alternative algorithms or computational methods that accomplish comparable results but differ in their implementation.

A morphological matrix, also known as a morphological analysis or morphological chart, is a tool for systematically analyzing and comparing different attributes or variables. It can analyze patent claims concerning prior art by structuring and organizing the relevant information for a comprehensive evaluation. Then, thru a process of “morphing” each claim element, we can evaluate how close our patent claim is to the prior art.

Utilizing the Creativity Tool “Lions Den”

The “Lion’s Den” technique challenges inventors and patent counsel to explore both sides of the debate surrounding prior art. By deeply examining the strengths and weaknesses, inventors and patent counsel can gain insights into areas for improvement.   Using the “lion’s den” creativity tool, we can analyze our patent claim against the asserted prior art of the patent examiner by formally taking both sides of the argument.

Using the Creativity Tool “Opposites”

Inventors and patent counsel are prompted to consider what aspects of the prior art are missing when they use the “Opposites” technique. For instance, if our claimed invention patent application is impacted by the prior art by the examiner for a smart home automation system with a primary focus on improving energy efficiency, then inventors and patent counsel, using this opposites technique, may want to think about incorporating features of each claim element that make energy efficiency worse, and in so doing the inventors and patent counsel can explore how each claim element impacts energy efficiency and lead to strong argument to the patent examiner.

Utilizing the Creativity Tool “Random Seed”

The “Random Seed” technique incorporates unexpected elements or stimuli into the creative process for overcoming prior art. Using a random object as a creative thinking tool can help you generate novel perspectives and ideas to differentiate your patent claims from the cited prior art. Here’s a simple process you can follow:

Select a random object: Choose any random object around you or use an online random object generator to generate an object. For example, let’s say the random object is a “paperclip.”

List attributes or characteristics: Write down a list of attributes or characteristics associated with the random object. These attributes might include flexibility, shape, metallic material, hook-like structure, and simplicity for a paperclip.

Relate attributes to your patent claims: Consider how the attributes of the random object can be metaphorically related to your patent claims. Think about how these attributes might inspire new ideas or different approaches for differentiating your claims from the cited prior art.

Brainstorm ideas: Use the attributes of the random object as triggers for brainstorming potential differentiators. For example:

Flexibility: How can your invention be more flexible or adaptable than the prior art?

Shape: Can the shape of your invention offer a unique advantage or feature?

Metallic material: Are there any benefits or improvements in the material composition of your invention?

Hook-like structure: Could your invention have a hook-like element that distinguishes it from the prior art?

Simplicity: Can you simplify the design or functionality of your invention to make it stand out?

Evaluate and refine: Review the ideas generated through this exercise and assess their feasibility, novelty, and relevance to your patent claims. Refine the most promising concepts, consider how they align with the prior art, and address any objections raised by the patent examiner.

Remember that this exercise is meant to spark creative thinking and generate fresh perspectives. It can serve as a starting point for exploring unique differentiators for your patent claims. Additionally, it is essential to ensure that any ideas generated through this exercise comply with patentability requirements and align with your specific patent application’s technical aspects and legal standards.


Inventors and patent counsel face challenges when overcoming prior art during patent examination. However, they can successfully navigate this complex process by combining creativity and systematic thinking tools. Creative thinking tools such as associative thinking, “Lions Den,” and “Random Seed” techniques encourage imaginative thinking and provide alternative perspectives to differentiate patent claims. By incorporating Creativity Tools such as the “Opposites” technique, inventors and patent counsel can explore unique angles and generate novel ideas to address prior art challenges. Systematic thinking tools like the “Inventing Around Checklist for the Prior Art,” “Cross Mapping,” and the “Morphological Matrix” offer systematic approaches to analyze and interpret claim language, evaluate synergies between claims and prior art, and identify alternative solutions. By leveraging these tools, inventors and patent counsel can enhance their strategies for differentiating their patent claims from asserted prior art, ultimately increasing their chances of securing patent protection.