Updated: January 20, 2022
Do I have a duty to search prior art before I file my patent application?
No, but if you do, you must disclose your results to the USPTO!
An inventor does not have a duty to search prior art before filing a patent application. However, if an inventor has conducted a formal or informal search, the references uncovered in the search should be disclosed. Also, anyone involved in the preparation and filing of a patent application has a duty to disclose what they may already know about the prior art.
The patent examination procedure at the USPTO is not an adversarial system as a lawsuit is. Rather, it is a cooperative investigation between the examiner and an applicant. The examiner is supposed to act as an advocate for the public and not as an adversary to inventors. Because the patent examination process is not an adversarial system, the USPTO places this duty of disclosure on the patent applicant. It is the patent applicant’s duty to disclose material information to the USPTO regarding the invention so that the patent examiner can determine whether to grant or reject the claimed invention for the patent.55 Because the examination is a cooperative investigation, the rules impose on the patent applicant a duty of candor and good faith in dealing with the USPTO.
Should there be litigation and known material information was not disclosed, a court could render the patent invalid based on inequitable conduct due to the failure to meet the duty of disclosure and of candor and good faith. It is therefore recommended to take a liberal approach and disclose any reference that may be relevant to the invention, as there is no benefit of withholding potentially relevant information. If the patent application matures into a patent after disclosing the information to the examiner, the benefit of liberally disclosing the information is that the patent will be presumed valid over that information or reference. The inventor can satisfy the duty of disclosure by filing an Information Disclosure Statement (IDS; See Chapter 7 for more information on the IDS).56
56. See Chapter 7 for more information on Information Disclosure Statements