Patent Searching and the Duty of Disclosure

I frequently get asked about the necessity of patent searching.  Some clients question why they should run a search before filing an application when the Patent Office will always perform one in your application.

A patent search is never required before an application (well, almost never – there are some very rare situations).  But there are a lot of reasons why a patent search should be conducted beforehand.  First of all, the USPTO does not perform a search “for you.”  If anything, they are performing a search for the American public against you.  The USPTO Examiner’s job is to review an application and ensure that the applicant is awarded a patent only on that which he or she has invented and which has not already been disclosed, so that the applicant is not able to claim something which the public has properly come to believe is available for all.

A patent search is helpful to determine: 1) whether the invention is patentable at all, and 2) what aspects of the invention are patentable.  Regardless of your method of filing, you are going to spend considerable time and money chasing a patent, and if the idea is patentable at all, it is better to know that from the outset – you’ll have saved yourself considerable aggravation.  If the invention is patentable, you still want to make sure that the work that is required in preparing and prosecuting an application through to issuance is justified by the potential scope of the patent.  If the only protection that the patent may ever yield is far too narrow or specific to have any value, you may choose to drop the idea or, perhaps, change it to make it broader.

When a patent search is performed, it also helps the attorney immensely in drafting the application.  Without knowing the prior art, an attorney can’t draft claims which are precisely tailored to the patentable subject matter.  The attorney will be forced to either write claims that are overbroad (and likely far overbroad) or write claims that too narrow, and thus leave missed protection on the floor.

Whenever a patent search is performed, the results should always be disclosed to the Patent Office.  An applicant has a duty to disclose material relevant to patentability.  Failure to disclose such information can eventually become the basis for the patent being invalidated.