Relevant Prior Art Not Cited in Office Action Patent
 | 49 (7) (1997), p. 74. JOM is a publication of The Minerals, Metals & Materials Guild |
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Disclosing Prior Art to the U.South. Patent and Trademark Role
Arnold B. SilvermanIn the U.s.a., at that place is a duty to disclose to the U.S. Patent and Trademark Office any known prior art that is textile to the patentability of whatsoever claim of a pending U.Due south. patent application. The duty to disclose is part of the duty of candor and skilful faith imposed on the inventor and certain others in dealing with the U.Due south. Patent and Trademark Role. Failure to comply with this obligation can effect in a ruling that the applicant has engaged in inequitable behave, thereby invalidating any patent that might upshot on the application.
The duty to disclose applies to the inventors named in the application, the attorney or agents who are involved in the training or prosecution of the application, and certain other persons substantively involved with the preparation or prosecution of the application who are associated with the inventor and the assignee or anyone to whom there is an obligation to assign the application. Individuals other than the attorney, agent, or inventor may comply by providing the information to the attorney, agent, or inventor.
Equally there is no obligation to conduct a patentability search either prior to filing a patent application or during the pendency of the same, the duty to disclose amounts to the sharing of information with the U.Southward. Patent and Trademark Role. There is no duty to submit information that is non textile to the patentability of whatsoever existing claim in a patent application. There is also no duty to submit prior fine art that is merely cumulative of other art on tape in the patent application or being submitted with the information disclosure statement, which typically contains identification of the cited prior U.S. patents, foreign patents, or publications and provides copies of the same.
When an item of prior art is not in the English linguistic communication, the information disclosure argument must comprise a concise explanation of the relevance as understood by the individual within the grouping who is near knowledgeable well-nigh that prior art. If any prior art is not in the English linguistic communication and the individuals bailiwick to the duty to disclose have a complete or fractional translation, this should likewise exist provided.
Frequently, it is advantageous to identify the almost relevant prior fine art in the patent application as filed, every bit this provides an initial opportunity to identify the prior art in context in the evolutionary process that led to the invention. It also provides an opportunity to distinguish the prior art from the claimed invention.
In general, an information disclosure statement should exist filed within iii months after the filing date of the U.Southward. application or before the mailing date of a first role action on the merits from the U.S. Patent and Trademark Office, whichever occurs afterward. There are provisions for submitting an information disclosure statement at a later date subject to payment of the required fee and, in some instances (e.thou., after the issuance of a final action or a find of allowance), upon an appropriate showing that there was no early noesis of the prior fine art that would take enabled a more than timely filing. For example, a U.Due south. applicant will oftentimes learn of relevant prior art later filing the U.Southward. application equally a result of an activeness taken by a foreign patent function or through office actions or searches obtained in connectedness with other inventions relating to the same or similar areas of engineering science.
The duty to disclose is deemed to exist satisfied if all data known to be textile to patentability of whatsoever claim is either cited by or submitted to the U.S. Patent and Trademark Part. When in dubiousness as to any item item of prior art, it is more often than not audio practice to include that prior art in the information disclosure statement. This is particularly true in view of the fact that the rules state that no patent will exist granted on an application in connection with which fraud on the U.Southward. Patent and Trademark Role was practiced or attempted or the duty of disclosure was violated through bad religion or intentional misconduct. Whatsoever patent issued under such circumstances could be invalidated.
By statute, a U.Southward. patent is presumed to be valid. It is important, therefore, that the most cloth prior art be presented to the examiner so that the examiner's ruling is made with this art having been considered. It is obviously easier to claiming the validity of a patent when the virtually fabric prior art was non before the examiner. While it is an incidental benefit to compliance with a duty to disclose, many attorneys who were practicing earlier the duty to disclose came into existence routinely disclosed the most relevant prior art. It was felt to be highly desirable to present such fine art to the examiner both as a matter of fair and open dealing with the U.Southward. Patent and Trademark Office (then chosen the Patent Part) and to obtain the benefit of the presumption of validity over the virtually material prior fine art.
The rules country that the mere filing of an data disclosure argument shall not be construed as an access that the information cited in the statement is material to patentability. As a result, although there is no duty to disclose data that is non material to the patentability of ane or more claims, this dominion eliminates a potentially meaningful risk. In instances where an private decides to err in the direction of providing the information to the U.S. Patent and Trademark Office when it is not clear whether the prior art is in fact material to patentability, this will not be held against the submitter.
An information disclosure statement filed before the date of the grant of a patent that does not comply with the rules will be placed in the file of the patent application just will not be considered by the examiner. As a result, the presumption of validity will not utilize with respect to whatever prior fine art contained inside such an information disclosure argument, even if the prior art is more than material to patentability than the prior art that was earlier the examiner.
It is critical that an inventor and others involved in the patentability evaluation cooperate fully with the patent attorney or amanuensis preparing and prosecuting the patent application to make sure that all prior art known to them is provided. This is desirable not only to facilitate making an accurate initial patentability evaluation before there is a conclusion as to whether to file a patent application or not, but also once an application has been filed, to brand sure the obligations that are imposed by the duty to disclose are met.
A.B. Silverman is chair of the Intellectual Belongings Section and a member of Eckert Seamans Cherin & Mellott, LLC, in Pittsburgh, Pennsylvania.
For more than information, please contact A.B. Silverman at Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 42nd Floor, Pittsburgh, Pennsylvania 15219; telephone (412) 566-6000; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.
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