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A Dozen Reasons Why Even Ideal Prior Art Searches Might Find Nothing



By Kelce S. Wilson (kewilson@rim.com), Technical Director; and Alejandro Soto (asoto@rim.com), Patent Attorney, both with Research In Motion (RIM).

How often does an anxious inventor, upon learning that a professional prior art search had not found anything describing his idea, then ask the patent prosecutor, “So does that mean my invention is patentable?” And how often does a patent litigator, defending against a validity attack on an asserted patent, imply to a jury that, merely because the PTO Examiner didn’t find invalidating prior art, the patent must therefore be valid? Although some inventors or litigators may be inclined to rely on the absence of any discovered prior art to insist on patentability or validity, reality is considerably more complex.

There are at least a dozen reasons why even an ideal, expertly-implemented search of all publicly- available document collections world-wide, in all languages, and using all potentially-relevant terminology, would fail to find any relevant prior art. Thus, even beyond attempting to address imperfections in the implementation of the search, further consideration should be devoted to analyzing why a prior art search might have found nothing.

The 12 reasons enumerated here are divided into six categories: (a) document evaporation, (b) secrecy, (c) impracticality, (d) absence of market, (e) triviality, and (f) true novelty. Upon eliminating all other possible reasons except for the final reason, which is alone in the category identified here as true novelty, an analysis can solidly endorse paten...

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