You need not search, but you must disclose what you know
Searching does not raise the legal standard, but it changes what you know, and known material information must be cited.
Lesson 7 of 8 · 4 min
No duty to search
Searching before you file is a choice, not a legal requirement. The US Patent and Trademark Office (USPTO) says so directly: "An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent" (MPEP § 410). An examiner can still ask whether a search was made (37 C.F.R. § 1.105).
A duty to tell what you know
Rule 1.56 imposes a duty of candor, which means honesty with the Office. It applies to inventors, attorneys and others substantively involved in the application, and it covers information known to be material (37 C.F.R. § 1.56).
Under that rule, information is material if it is non-cumulative, meaning it adds something the Office does not already have, and it does one of two things (37 C.F.R. § 1.56):
- It establishes a prima facie case of unpatentability, meaning it would support a rejection unless rebutted.
- It refutes a position you took with the Office.
The duty is individual and concerns information actually known (MPEP § 2001). You report it in an Information Disclosure Statement (IDS), the form that lists references for the examiner.
How searching fits in
Searching does not raise the legal standard. It changes what you know, and what you know and find material, you must cite. So a search you run before filing still matters after filing. Every close reference from your log needs a decision.
What happens if you hide something
A court can hold a patent unenforceable for inequitable conduct, which means deceiving the Office. According to one law firm's summary, Therasense requires but-for materiality and specific intent (Goodwin). But-for materiality means the Office would not have allowed the claim had it known. Specific intent means a deliberate decision to withhold.
In our judgment, Rule 1.56 is the compliance target and Therasense describes when a court will act. Aim at the first. Do not plan around the second.
When you are unsure
The USPTO's advice is plain: "When in doubt, it is desirable and safest to submit information" (MPEP § 2004).
This lesson covers US law only. We did not verify disclosure duties in other countries.
Timeless wisdom
In our judgment, the patent bargain depends on honesty, because examiners cannot see everything an applicant sees. The law asks for candor about what you know, not for perfect knowledge. There is no duty to search (MPEP § 410), but those substantively involved must disclose information known to be material (37 C.F.R. § 1.56). The duty is individual and concerns information actually known (MPEP § 2001). The long-standing advice remains "When in doubt, it is desirable and safest to submit information" (MPEP § 2004).
What's current
As of November 6, 2026
Since January 19, 2025, cumulative IDS references over 50, 100 and 200 trigger size fees of $200, $500 and $800. The same amounts apply to every entity, each item counts even if duplicated, and higher tiers are net of earlier payments (USPTO fee schedule; 89 FR 91898). The USPTO's rule data put about 13% of applications over 50 items (89 FR 91898).
The USPTO's April 2024 notice says the duty "cannot be transferred to another person or a computer system such as an AI tool" (89 FR 25609).
Key takeaways
- You have no duty to search before filing a US application.
- You must disclose information you know to be material.
- The duty is personal and applies to everyone substantively involved.
- When in doubt, the USPTO says submitting is safest.
Check your understanding
Sources
The Academy is general education, not legal advice, and reading it doesn't create an attorney-client relationship. Patent law and fees change, so check the linked sources and have a registered patent attorney or agent review your situation before you file. Obsidyan sells patent software, including AI drafting tools, so weigh what these lessons say about AI tools with that in mind.