Patent applicants have a duty to disclose relevant prior art to the Patent Office during the application process. The following sections address some of the basic principles associated with that duty of disclosure.
Who owes a duty to disclose?
Every inventor named in a patent application owes a duty to disclose information relevant to the examination of the application. In addition to the inventors, the attorneys involved in the preparation and prosecution of the patent application owe a duty to disclose. Other people who “substantively involved in the preparation or prosecution of the application” may also owe a duty to disclose. 37 C.F.R. 1.56
What type of information needs to be submitted?
Some of the more common types of information submitted are publications such as scholarly articles and citations to patent documents such as US patents and US pre-grant publications. However, 37 CFR 1.56 requires the submission of all “information” known to be material to patentability. The standard is written to be so broad that just about anything that a patent examiner may want to consider in evaluating patentability could be included within the standard. In addition to older patent documents and articles a patent examiner may be interested in information relating to whether and invention is enabled, prior public uses of the invention, sales and offers to sell the invention, sources of information inventors used to devise the invention, prior inventions of others, etc.
Do I need to provide copies of articles etc.?
The Patent Office generally requires copies of any articles or other information disclosed with the exception of US patents and US patent publications.
What would a Patent Examiner want to review?
Examiners are responsible for making those rejections that are justified under the patent laws and tend to focus on anticipation and obviousness. Without attempting to define these concepts, any publication or other information that would demonstrate that what is being claimed is not in fact new would be highly relevant to the examiner. Similarly, references that teach the concepts that make up the elements that appear in the claims may be relevant. References teaching large numbers of elements claimed in an invention tend to be the most relevant.
How do I know when I have submitted enough information?
The Patent Office does not require the submission of documents that would be cumulative of information that is already part of the record. In other words, if an applicant has already submitted references teaching a piece of information relating to patentability then there is typically no duty to submit additional references teaching that same information. When the applicant has submitted the required information and additional references being considered are merely cumulative to the information already submitted then the applicant may be at the point where enough information has been submitted.
Do I have to search for references to satisfy the duty of disclosure?
No. The Patent Office only requires the submission of information that is known. There is no duty to discover new information. However, if new information is discovered, i.e. becomes known, then there may be a corresponding duty to disclose.
Do I have to disclose information that became available after the filing date?
Generally, information like a publication that became available to the public after the filing date of the application would not be considered relevant. However, when more than one application has been filed, disclosures from the time between the filing of the applications may be highly relevant to the examination of the patent application. It is important not to assume that any intervening references are irrelevant to the examination of the patent application.
How can I be comfortable that I have satisfied my duty of disclosure?
Although only a small number of patent applications end up in court, being ready for court is the true test of compliance with the duty of disclosure. If a patent applicant can confidently say in court that all of the information that was not disclosed was either not important to examination or was cumulative of other information that was supplied, then the applicant has likely complied with the duty of disclosure.
How do inventors typically satisfy the duty to disclose?
Typically inventors provide the information and relevant references to the patent attorney or agent that is handling the relevant application who in turn files that information with the Patent Office.
In what form does the Patent Office take the disclosure information?
The duty to disclose it is typically satisfied by filing an Information Disclosure Statement citing the relevant information being disclosed and submitting supporting documentation often referred to as Non-Patent Literature.
When is the duty of disclosure owed?
In patent applications the duty of disclosure exist during the pendency of the application concluding at either the abandonment of the application or the issuance of the patent. The duty of disclosure also applies to other proceedings at the Patent Office.
This article is based on portions of Chapter 2000 of the Manual of Patent Examining Procedure and was prepared by John Edel, Louisiana Patent Attorney.