Duty to disclose prior art to the United States Patent and Trademark Office

JOM, Oct 2003 by Silverman, Arnold B

This month featuring . . . Material Matters

Failure of a person who is involved in the preparation or prosecution of a United States patent application to disclose material prior art can result in the patent not issuing, or if issued, being held unenforceable or invalid. As in many instances, the issue of whether prior art is material to patentability can be quite subjective; it is critical that inventors, assignees, and attorneys be acquainted with the obligations to disclose such prior art.

First of all, the obligation is one to act in compliance with the duty of candor and good faith in dealing with the United States Patent and Trademark Office (USPTO). The duty to disclose applies to individuals associated with the filing or prosecution of a patent application. This will generally include the inventor, each attorney or agent, as well as the assignee of the application or one to whom a duty of assignment is owed by one or more inventors.

Secondly, the duty applies only with respect to prior art which is material to patentability of one or more claims pending in the application. It does not apply to subject matter disclosed but not embraced by the claims or to cancelled claims.

There is no duty on the part of an applicant to make a search or other study to uncover prior art. The standard relates more to sharing of prior art with which the individual is acquainted.

The type of prior art generally brought to the attention of the USPTO includes documents which have an early enough effective date to be citable against the application. Such documents may be prior patents, certain patent applications, and publications. It is important to bear in mind with respect to citations of prior patents that it is the disclosure of the patent that is to be evaluated, as contrasted with the scope of the claims the prior patentee obtained.

It is important to remain alert to possible sources of prior art. For example, if prior related patents have been issued to the same inventor or assignee, consideration should be given to whether any of them are material to the issue of patentability of the application being prosecuted. Also, frequently search reports and actions from a foreign patent office identify prior art which was not previously considered in connection with the application in question by either the applicant or the USPTO.

It is not essential that the prior art fully disclose the invention sought to be protected by a claim. Prior art can be combined with other prior art to create an obviousness type rejection and must also be submitted to the USPTO.

Generally, to prove inequitable conduct due to failure to disclose, one must establish that the applicant failed to disclose material prior art with intent to mislead. Where intent to mislead is clear, fraud may be found to exist.

As the standard involves good faith, the duty may be violated through fraud being practiced or attempted or through bad faith, as well as through other intentional conduct.

The safest course of action, when in doubt, is to err in the direction of making the disclosure. If an item of prior art would merely be cumulative as to something already before the USPTO or being cited in an "Information Disclosure Statement" submitted to the USPTO, it need not be cited as the disclosure would add nothing to the USPTO evaluation in action on the patent application claims. The USPTO rules provide specific mechanics for making a submission. A list of the prior art submitted is to be provided along with a legible copy of each cited item of prior art (except U.S. patents). In addition, if the document is not in English, a translation should be submitted.

In addition to filing an Information Disclosure Statement, either with the patent application or shortly after filing, the duty to disclose is an ongoing obligation. For example, if six months after the filing of the patent application a person first becomes aware of additional material prior art, a second Information Disclosure Statement should be submitted to the USPTO in a diligent manner. In summary, the obligation to avoid unethical conduct before the USPTO is a very important duty which requires good faith and timely compliance. When an inventor or assignee becomes aware of prior art which may be material to a determination of patentability, the patent attorney or agent handling the case should be contacted promptly in order that the technical and legal issues can be discussed and a good faith determination regarding the duty of disclosure can be made. The failure to make a proper disclosure can result in the application not issuing as a patent or if issued becoming unenforceable or invalid. Further, knowing efforts to enforce such a patent can lead to a determination that patent misuse has occurred or that the antitrust laws have been violated.

Arnold B. Silverman is chair of the Intellectual Property department and a member of Eckert Seamans Cherin & Mellott, LLC in Pittsburgh, Pennsylvania.