By Brendan Baggot2
Although there are many routes to invalidating a patent, what are the chances of finding prior
art missed during U.S. prosecution? What are some of the factors that influence the outcome of a patent search?
How can one assess a priori the likelihood of uncovering "new" prior art? How does the specific technology
affect the outcome? These and other questions will be explored in this article.
Where Was the Technology Effort Located? Europe? Japan?
Most U.S. patent attorneys will agree that foreign art is cited less often than U.S. art. This
is somewhat due to the Office policy that Examiners are not required to provide copies of U.S. patents and patent
publications to applicants but also partly due to search queries which are not directed to foreign art.
3 This bias towards domestic art is not without
effect. If the bulk of the research occurred in Europe, search queries which do not include, for example, the
Derwent (WPIDS ) database may miss this art. A review of the search query will reveal which databases were searched.
Another factor affecting search query quality is whether or not the key inventors names' were
searched. If a certain two or three labs were competing, any search which does not include these key inventors ...
