Patent Applicant’s Duty to Disclose
Duty to Disclose Relevant References to US Patent Office
In the United States and several other countries, a patent applicant and anyone within the applicant’s company or associated with the application have a duty to disclose relevant public references. This includes the applicant’s attorney, company ownership, company employees, inventors, etc. (collectively, the “Applicant” for a patent).
Do I Need to do a Patentability Search?
A patent Applicant’s duty of disclosure does not require that the Applicant do a search outside of their company to find references to submit to the Patent Office. The patent examiner’s job is to do the formal search and do a proper examination of the application. However, if the Applicant is aware of anything relevant or becomes aware of anything relevant at any time before the patent issues, they are obligated to disclose that to the Patent Office.
What Should Be Disclosed?
The law requires that the Applicant disclose any public information to the Patent Office that is “material to the patentability” of the invention. Material to the patentability of the invention means anything that a patent examiner would find relevant for consideration in granting a patent or not. References are only relevant if they are before (prior to) the filing date of the patent application because references dated after the application filing cannot be used against the application. The types of things considered material to patentability generally come in the form of:
A) prior published articles, patents, product announcements, technical reports, lectures or other published material of others incorporating the invention, or which might be considered related to your invention;
B) information relating to or from copending applications including all references cited in those applications;
C) prior references found or cited in related foreign patent applications;
D) information from related litigation;
E) any public use or demonstration of the invention or of apparatus or methods which might be considered as relevant to the invention, including similar products or methods which have been in the commercial marketplace prior to the application filing;
F) any sale or offer for sale of products incorporating the invention or made by its use, or which might be considered relevant to the invention, including similar products which have been in the commercial marketplace;
G) any machine, product, service, etc., of which the invention is an improvement; and
H) any pertinent work of others, including any coworkers, that has been made public of which Applicant is aware.
If the same type of material, with the same relevance, is in multiple similar references, it is only necessary to submit one of them. There is not a duty to disclose all of the references if their relevant disclosure is of the same effect.
When and How Should it Be Disclosed?
The short answer is that any relevant information should be disclosed as soon as possible after the Applicant becomes aware of it. The longer answer is that if an Applicant submits a reference to the Patent Office more than 3 months after the Applicant becomes aware of it and that submission is after the first Office Action in the Application, there is an additional government fee for late submission. If the Applicant submits it after a notice of allowance is received, there is a different, larger fee and will, at a minimum, delay the patent issuing.
Relevant references are submitted to the Patent Office through an Information Disclosure Statement (“IDS”). An IDS is a form that includes the information needed to identify the reference being cited, and a copy of the reference, in some cases The IDS and copies of all of the necessary references are uploaded to the Patent Office PAIR system for review and consideration by the patent examiner assigned to the application. If a reference is in a foreign language and there is an English translation available for all or part of it, that should be submitted as well.
What Happens if I Don’t Disclose it?
Failure to disclose a particular reference may have no noticeable effect on the patent. The time when a failure to cite a particular reference becomes an issue is when the patent owner tries to enforce the patent. If key references that would have been material to the patent being issued are missing, an infringer may be able to invalidate the patent or argue that the patent should be narrow because the patent examiner did not get a chance to review the references. It is much better to have the patent examiner consider ALL of the potentially relevant references so that those types of challenges are minimized.
If you know of a reference and intentionally withhold it, the patent can also be invalidated for inequitable conduct and fraud on the Patent Office. It is best to simply automatically disclose everything relevant as soon as you learn of it or of its relevancy.
What Should I Do to Make Sure I Meet the Duty to Disclose?
At Booth Udall Fuller, we ensure that any references used or cited in a related patent application are automatically included in an IDS through the systems we use to track each application and cited reference. We spend time with each application to ensure all of these references are cited and cross-cited in related applications. However, Applicants are often aware of much more than what the Patent Office cites. It is wise for a patent Applicant to educate its inventors, administration and staff of the patent duty of disclosure, and to issue occasional reminders to specifically ask everyone associated with a patent application to submit information relevant to a product: 1) during new product development; 2) at new application filings; and 3) at each paper issuance from the Patent Office relating to the Application.
Whenever someone within your company identifies a new reference, send it to your attorneys to submit to the Patent Office the next time they submit an IDS for that case, but certainly within 3 months.
It is important to promptly identify and submit everything you are aware of that is relevant to the examination of your patent application to maintain your full patent rights. Please contact a qualified professional at Booth Udall Fuller, PLC with any questions you may have about patents, your duty of disclosure, how to deal with late submissions, or any other intellectual property protection or strategy needs.