Revised August 27 2006

“Nothing gives greater joy to an accused infringer than somehow discovering that the (inventor/applicant) failed to disclose material prior art to the examiner.”1

U.S. Law requires an inventor and his/her patent attorney, in applying for patent protection, to promptly disclose any known information to the patent examiner that would be “material” to the determination of patentability. This disclosure obligation is an affirmative duty and extends not only to the inventor, but to the inventor’s employees and the employees of the assignee of the patent application (frequently the inventor’s employer). Although the patent examiner is obligated to search the prior art as part of the examination of the application, the law is very clear that the inventor, etc., can not justify failing to disclose information on the basis that the examiner should have found the prior art reference in the course of a diligent search. Simply put, the patent applicant can not play “catch me if you can” with the patent examiner.

The disclosure is to ideally be made at the time of filing of the patent application or within three months of the filing. It should be made prior to the first Office Action. However the duty of disclosure is continuing during the entire term of the patent examination process. Later discovered information must also be disclosed as discussed below.

One manner of disclosing information to the USPTO is through the filing of an Information Disclosure Statement. An “Information Disclosure Statement by Applicant” form is located at the USPTO web site www.uspto.gov. The specific provisions governing the duty to disclose information, including the requirements for filing of the Information Disclosure Statement (IDS), are set forth in Section 609 of Chapter 600 and in Chapter 2000 of the Manual of Patent Examining Procedure (MPEP). The MPEP is also accessible at the USPTO web site.

The law does not require that the inventor conduct a patent search as part of the patent application process (although a search is highly recommended prior to the filing of a utility application and especially in light of relatively recent court decisions pertaining to file wrapper estoppel)2. Further, the disclosure of information is not an admission that the disclosed prior art precludes the patentability of the invention.

There are distinct advantages of disclosing information, even if there is a reasonable doubt as to whether it must be disclosed. First, if there is a later dispute regarding the possible infringement of the patent, the alleged infringing party will certainly obtain a copy of the USPTO file containing all documents pertaining to the examined and issued patent. This file, termed the patent “file wrapper”, will be closely scrutinized to see whether the applicant had made disclosure of all relevant prior art. Failure to disclose known and relevant information can be the basis of invalidating the patent.

There is another advantage to fully disclosing information. Information that was disclosed to and made of record by the examiner in determining patentablity can not be later sited by a third party as justification for a re-examination of the patent. Recall that to achieve re-examination, there must be a showing of a substantial new question of patentability.

A third compelling reason for disclosure is that the law clearly imposes a duty of candor and good faith that is not limited to interpretation of a “materiality” definition. See 37 CFR Section 1.56 and MPEP Section 2001.4 that provide no grant of a patent is to be made in the presence of “bad faith or intentional misconduct”.

The formalities of the IDS requirements are relatively straight-forward. See 37 CFR Sections 1.97 & 1.98, as well as MPEP Section 609. First, a list of all patents, publications (including published patent applications) known to the applicant, including employees, etc., must be submitted. Second, legible copies of the documents are to be submitted. (Note that copies of US patent or patent applications are not required for applications filed after June 30, 2003.) Third, a concise statement of the relevance of the referenced document must be provided by the applicant or other individual having the disclosure obligation (see the first paragraph above) and most knowledgeable of the art for any reference that is not in the English language. However the IDS form does request that the “pages, columns, lines where relevant passages or relevant figures appear” be specified for each reference.

“Material” to patentability is more problematic. Materiality is the legal definition or label applied to the concept that an invention is not patentable if the invention, as defined by the claims set forth in the application, is previously known. The specific standard for determining what is material is contained in 37 CFR 1.56 and is discussed Section 2001.05 of the MPEP. Material to patentability is a prior art reference or a combination of references which, on its face, appears to describe each element of the claimed invention. Material to patentability is also information that contradicts the applicant’s position in regard to whether the invention is patentable.

For example, suppose the applicant is attempting to patent a device and method for disinfecting seeds by immersing the seeds in water, followed by exposure to microwave energy. If the applicant is aware of a reference that describes exposing seeds to steam vapor, followed by exposure to microwave energy, the reference should likely be disclosed. Although the reference may be material on its face, i.e., wetting the seeds prior to the microwave step, the applicant would not be precluded from demonstrating that immersing seeds in water provides improved removal of dirt and greater saturation of water into the seed hull or shell, thereby achieving more effective heating of the seeds by the microwave energy.

Note, the law encourages early filing of information disclosure statements, i.e., prior to the first office action by the examiner, and allows multiple statements to be filed. An information statement can, however, be filed up to the time of final action or allowance (thereby closing prosecution), provided that an additional fee is paid. (The fee is currently $180.) An information disclosure statement can also be filed up to the time a payment of the issue fee, provided that the applicant provides an additional certification and fee. The disclosing party is required to certify that, after reasonable inquiry, the information now disclosed was not known to any individual having the disclosure obligation more than 3 months prior to this 11th hour disclosure.

Although I do not discourage individuals from filing their own patent application, this topic also “discloses” an example where employment of a patent attorney can result in a stronger and more robust patent (and therefore hopefully more financially rewarding patent).

Note as a supplement, the USPTO has published (2006) proposed revisions to the Information Disclosure Statement requirements. Basically the USPTO wants the applicant to limit the number of references to 20 and that no reference exceed 25 pages. If implemented, it is unclear how this requirement will impact the patent owner’s defense against an infringer’s claim of inequitable conduct in not disclosing all relevant information during the examination process.

1 From “Where The Bodies Are: Current Examplars of Inequitable Conduct and How to Avoid Them”, Professor David Hricik, Texas Intellectual Property Law Journal, Vol. 12, No. 2, Winter 2004.

2 File wrapper estoppel, a complex and fluid topic, basically discourages the filing of excessively broad claims since subsequent amendments may limit patent coverage to the explicit terms of the claims, regardless of the patent specification stating the invention includes variations that would be known to persons skilled in the art after reading the application. Simply put, the scope of the patent is narrowed. Therefore, it is wise to have a patent search conducted and then limit the claims (which define the invention) closely to the broadest scope reasonably achievable.