The United States Patent and Trademark Office will truly look anywhere to find prior art when evaluating  a patent application. This was made abundantly clear by its recent reference to the movie Borat when denying a patent application for a “scrotal support garment.” Specifically, US Patent Application 12/071,878 presented a male support device that will look strikingly familiar to fans of comedian Sacha Cohen.

Proposed Scrotal Support Device

The movie Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan is a 2006 American movie starring Sacha Baron Cohen, a famous Canadian comedian. One of the more infamous scenes of the movie involves Borat (Cohen) wearing a unique one piece swimsuit, which can be seen here. Apparently, someone at the USPTO remembered this scene. It was the basis for the USPTO’s denial of Application 12/071,878. In fact, the USPTO went so far as to provide the diagram seen below as an explanation of the similarities between the proposed invention and Borat’s apparel.

Exhibit B of the USPTO's Denial

The lesson to be learned from this is that prior art need not come from previously patented items, or even from a likely source. Some critics might think that Borat’s swimwear is not a proper piece of prior art, but under the rules, the USPTO got this right. Specifically, MPEP 2125 states, “Drawings and pictures can anticipate claims if they clearly show the structure which is claimed… The origin of the drawing is immaterial… The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.” Essentially then, anything can be prior art if it precedes a claimed invention.

This fact has left at least one patent applicant wishing either that Borat had never been filmed or that the employees at the USPTO had refrained from seeing it. Nevertheless, the lesson to be learned is that prior art truly can be almost anything.

- Tracy R. Hancock

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5 Responses to Borat and the USPTO

  1. Raymond Rufat says:

    I’m curious to see what this company does moving forward after being denied the patent. Would altering the material of the garment or adding some more support, or tweaking it in some way take it out of the prior art category? How similar does the prior art have to be in order to deny a patent?

  2. Niels Melius says:

    Tracy, great post! I’m surprised the USPTO decided to deny a patent application with the recent proliferation of patent grants. But you can’t deny the genius of Borat’s prior “art.”

  3. Ian says:

    Excellent post Tracy. I never thought Borat would teach me aspects of the US patent process, but stranger things have happened. While I sympathize with Donald R. Quinn’s (the patent applicant) situation–he apparently had not even seen the movie when he conceived of his invention–patent law is designed to reward true innovation, not mere mimicry. While Mr. Quinn will not be able to reap the financial rewards that come with securing a patent, he should feel comfort in the fact that a movie that has entertained millions has the potential to spur medical advancements.

  4. Andrew Ralls says:

    I think this is my favorite post of the semester.

  5. Francie Kammeraad says:

    Thank you for your light-hearted post. For an invention to be patented, it has to be non-obvious, meaning more than a “predictible use of prior art.” Because, as you stated above, prior art can come from almost anywhere–books, movies, previous inventions, etc.–this requirement can be a serious obstacle for inventors with big financial consequences. In fact, a quick Google search shows that there are companies and websites, like Patent Hawk, that help inventors through the patent search process in order to prevent denials of patents, like the funny one you highlighted above.