To search or not to search: that is the (pretty simple) question.
Under U.S. patent law, there is a duty to disclose to the USPTO any prior art (including patents, publications, and other inventions) that is material to the patentability of your invention, but there is no affirmative duty to search for this prior art. As such, many large firms (and corporations) discourage inventors from conducting a patent search. Their theory is that the less you disclose to the USPTO, the more likely it is that your patent will issue. While this may be true, it does an inventor little good to get a patent by pretending that prior art doesn’t exist.
On the other hand, there are many good reasons to conduct a patent search.
- First, if the search reveals prior art that is exactly like your invention, then your business can save a lot of time and money by not filing a patent application or by not pursuing the invention at all.
- Second, in our experience, the USPTO will take your patent application more seriously if you disclose patent and non-patent prior art. We have seen applications that fail to disclose prior art (filed by large law firms) get the slow treatment at the USPTO.
- Third, a patent that discloses prior art typically ends up being a strong patent, because when the patent issues, the cover of the patent includes “References Cited,” and there is a presumption that the patent’s claims are patentable over these references.
For all of these reasons, Clock Tower Law Group recommends conducting a patent search, either formal or informal, for all patent applications.
[EDITOR’S NOTE: In the summer of 2025, Clocktower Intern Mark Magyar used artificial intelligence (AI) software to shorten over 100 Clocktower articles by 17%. The shortened articles are included as comments to the original ones. And 17 is the most random number (https://www.giantpeople.com/4497.html) (https://www.clocktowerlaw.com/5919.html).]
* To Search or Not to Search: That Is the (Pretty Simple) Question
Under U.S. patent law, you must disclose to the USPTO any prior art (patents, publications, inventions) material to your invention’s patentability. But you are not required to search for such prior art. Many large firms discourage inventors from searching, on the theory that the less disclosed, the greater the chance of getting a patent. While that may be true, a patent gained by ignoring prior art isn’t much help to an inventor.
There are, however, strong reasons to conduct a patent search.
First, if a search reveals prior art identical to your invention, you can save considerable time and money by skipping the application or abandoning the idea.
Second, the USPTO tends to take applications more seriously when patent and non-patent prior art are disclosed. We’ve seen applications with no disclosed art (often from large firms) receive slower treatment.
Third, patents that cite prior art usually end up stronger. Issued patents include a “References Cited” section, creating a presumption that the claims are valid over those references.
For all these reasons, Clock Tower Law Group recommends a patent search—formal or informal—for every application.