The following article appears in the journal JOM,
49 (7) (1997), p. 74.

JOM is a publication of The Minerals, Metals & Materials Society

Disclosing Prior Art to the U.S. Patent and Trademark Office

Arnold B. Silverman

In the United States, there is a duty to disclose to the U.S. Patent and Trademark Office any known prior art that is material to the patentability of any claim of a pending U.S. patent application. The duty to disclose is part of the duty of candor and good faith imposed on the inventor and certain others in dealing with the U.S. Patent and Trademark Office. Failure to comply with this obligation can result in a ruling that the applicant has engaged in inequitable conduct, thereby invalidating any patent that might issue on the application.

The duty to disclose applies to the inventors named in the application, the attorney or agents who are involved in the preparation 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.

As 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.S. Patent and Trademark Office. There is no duty to submit information that is not material to the patentability of any existing claim in a patent application. There is also no duty to submit prior art that is merely cumulative of other art on record 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 language, the information disclosure statement must contain a concise explanation of the relevance as understood by the individual within the group who is most knowledgeable about that prior art. If any prior art is not in the English language and the individuals subject to the duty to disclose have a complete or partial translation, this should also be provided.

Frequently, it is advantageous to identify the most relevant prior art in the patent application as filed, as this provides an initial opportunity to place 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 be filed within three months after the filing date of the U.S. application or before the mailing date of a first office action on the merits from the U.S. Patent and Trademark Office, whichever occurs later. 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.g., after the issuance of a final action or a notice of allowance), upon an appropriate showing that there was no early knowledge of the prior art that would have enabled a more timely filing. For example, a U.S. applicant will frequently learn of relevant prior art after filing the U.S. application as a result of an action taken by a foreign patent office or through office actions or searches obtained in connection with other inventions relating to the same or similar areas of technology.

The duty to disclose is deemed to be satisfied if all information known to be material to patentability of any claim is either cited by or submitted to the U.S. Patent and Trademark Office. When in doubt as to any particular item of prior art, it is generally sound 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 be granted on an application in connection with which fraud on the U.S. Patent and Trademark Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. Any patent issued under such circumstances could be invalidated.

By statute, a U.S. patent is presumed to be valid. It is important, therefore, that the most material 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 challenge the validity of a patent when the most material prior art was not before the examiner. While it is an incidental benefit to compliance with a duty to disclose, many attorneys who were practicing before the duty to disclose came into existence routinely disclosed the most relevant prior art. It was felt to be highly desirable to present such art to the examiner both as a matter of fair and open dealing with the U.S. Patent and Trademark Office (then called the Patent Office) and to obtain the benefit of the presumption of validity over the most material prior art.

The rules state that the mere filing of an information disclosure statement shall not be construed as an admission that the information cited in the statement is material to patentability. As a result, although there is no duty to disclose information that is not material to the patentability of one or more claims, this rule eliminates a potentially meaningful risk. In instances where an individual 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 but will not be considered by the examiner. As a result, the presumption of validity will not apply with respect to any prior art contained within such an information disclosure statement, even if the prior art is more material to patentability than the prior art that was before the examiner.

It is critical that an inventor and others involved in the patentability evaluation cooperate fully with the patent attorney or agent 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 decision as to whether to file a patent application or not, but also once an application has been filed, to make sure the obligations that are imposed by the duty to disclose are met.

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

For more 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.

Copyright © 1997 by The Minerals, Metals & Materials Society.

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