Why do it?

The results of a prior art search may reveal that the invention to be claimed and any obvious variant thereof does not exist in the public domain. Unfortunately, the results of a prior art search may also reveal that the invention to be claimed, or certain particulars thereof, do exist in the public domain, in which case the invention may need to be modified to design around the prior art.

Reasonable efforts to distinguish an invention to be claimed from prior art found during a prior art search is important to avoid any claims for willful infringement. A court is authorized to award treble damages where patent infringement is found to be willful.^[1]35 U.S.C. § 284. While willful infringement is often determined on a case-by-case basis, it may typically be found where the accused infringer, after learning of a patent: (1) deliberately copied the designs or ideas from the patent; or (2) failed to investigate the scope of the patent and did not form a good-faith belief that it was invalid or not infringed.^[2]See, e.g., Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp, 383 F.3d 1337, 1345-46 (Fed. Cir. 2004). In essence, current law establishes an affirmative duty to exercise due care to avoid infringement of the known patent rights of others.^[3]See, e.g., Imonex Servs., Inc. v. W.H. Munzprufer Dietmar Trenner GmbH, 408 F.3d 1374 (Fed. Cir. 2005); see also, Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409 (Fed. Cir. 1996).

References[+]

References
↑1	35 U.S.C. § 284.
↑2	See, e.g., Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp, 383 F.3d 1337, 1345-46 (Fed. Cir. 2004).
↑3	See, e.g., Imonex Servs., Inc. v. W.H. Munzprufer Dietmar Trenner GmbH, 408 F.3d 1374 (Fed. Cir. 2005); see also, Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409 (Fed. Cir. 1996).