I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art. Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art. Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.
Prior art is probably best understood as information that can be used by the patent examiner to reject claims in a patent application. This information is most commonly prior publications, such as technical articles, issued patents or published patent applications. It is also possible for prior art to consist of actions, such as a sale within the United States more than 12 months prior to a patent application being filed, or public use in the United States more than 12 months prior to a patent application being file. For more on this see What is Prior Art?
It is absolutely critical to understand that a reference, such as an article, issued patent or published patent application, does not need to be identical to an invention in order for the reference to qualify as prior art. A reference can be used as prior art for whatever the reference explains. What this means is that if you design an original 5-wheel transportation device you are going to have to distinguish all other wheeled transportation devices, regardless of whether they are identical. So if there is a 4-wheeled transportation device that will be used against you as prior art and it will be up to you to explain why your 5-wheel device is not obvious in light of the 4-wheel device.
The key to understanding what prior art is to understand that anything similar or in any way related to what you have created is going to be prior art if it existed prior to your invention or more than 12 months prior to the time you file a U.S. patent application.
Generally speaking, in order to obtain a patent an invention must be both new (i.e., never before done – see 35 USC 102) and it must not be obvious (i.e., not a trivial combination of things already known to exist in the prior art – see 35 USC 103). Most inventors are able to satisfy themselves that what they have created is not identical to what has come before, assuming they actually look at both available products and literature (including patents), but the question about what is obvious can be elusive even for patent attorneys. The elusive nature of what is an obvious invention is due to the fact that what is obvious has been elusive to the Supreme Court of the United States, who thinks that it is a matter of “common sense.” The “common sense” test urged by the Supreme Court, however, ignores that fact that after one learns of something it is always common sense. In essence, the Supreme Court test is overly simplistic and unrealistic. Thankfully the Patent Office and the Courts have chosen to largely ignore the Supreme Court test, but that only adds to the confusion for inventors.
It is indeed difficult even for those familiar with patent law to determine what is obvious in light of the rapidly evolving law in this area. Everyone knows about crazy inventions that have been patented, and even after the US Supreme Court expanded the definition of what is obvious to include those things that are considered “common sense” the Patent Office continues to issue patents on “inventions” that certainly seem to be within the common sense of virtually anyone. All of this can make it quite difficult to determine whether an invention will be perceived to be obvious, which is the real, substantial hurdle any inventor faces on the road to obtaining a patent.
It is important to understand that in order to obtain a patent it is not enough that an invention be new and/or different when compared to what already exists, but rather it must also be a non-trivial combination, which means that one of skill in the art would not have thought to make the invention prior to seeing it described. In other words, it cannot be considered to be a common sense or trivial variation of what has come before. Therefore, if you are tempted to think or believe that there is no prior art for your invention think again! In all but the most revolutionary of inventions there will be components and structures that are similar to the components and structures of what has been newly created. Similarly, for practically every invention there already exists one or more solutions to accomplish the same or similar task. All of those devices and methods that purport to accomplish the same or similar task are going to be prior art, even if they are clearly inferior.
What you need to do is focus on what is unique and ask whether that point of novelty is enough to warrant a patent. Of course, in order to reach this determination you need to know what is out there that will be used to measure up to your invention. This absolutely requires that inventors get out of their head that their invention is so revolutionary that no one else could have ever possibly come up with the invention. When a complete, professional grade search is done vast quantities of prior art will be found, and it becomes clear that every generation invents, and re-invents, the same or similar things.
So how is it possible that an inventor who searches cannot find prior art? This is typically a result of failure to adequately describe the invention and then searching only limited characterizations of their invention. For example, most inventors will look at what they have invented and then do a word search to see what else is out there. Frequently nothing will be found, not because there is nothing that could be found, but because the description searched is unnecessarily limiting. When a patent attorney or professional searcher engages in a patent search much effort is directed toward figuring out how others have described a particular innovation, particular features and characteristics of an invention. A thesaurus is your best friend, because while you might describe it as a “bubble mailer” others might describe it as a “padded envelope.” So you must endeavor to figure out all the various possible ways to describe your invention and the constituent parts. In almost every case when you search a variety of characterizations you will eventually stumble across the characterizations that most closely matches what others have previously relied upon. After all, there is no point in reinventing the wheel, so if those that have come before you refer to something in a certain way then you will refer to it in the same or similar way.
The morale of the story is this: there is ALWAYS prior art for your invention. If you search and come up with nothing that is because the search has been inadequate, not because there is nothing that can be found. If you doubt this ask yourself this: with well over 7.5 million issued utility patents issued in the United States is it likely that no aspect of your invention has ever been conceived?