Duty of Disclosure

An essential part of filing and prosecuting a patent application in the United States is the duty of disclosure, which requires the disclosure of all known information which is material to patentability. Because a failure to comply with the duty of disclosure may result in a finding of inequitable conduct (fraud on the Patent Office), rendering the patent unenforceable, it is important for those associated with a patent application to understand their duties, and how such duties are discharged.

The duty of disclosure requires disclosure of all information relevant or related to the invention, and extends to each individual who is involved with the preparation, filing and/or prosecution of the patent application. This includes the inventors, the assignee, and all individuals who work for the inventors or assignee and who assist in the preparation or prosecution of the application. The duty of disclosure exists throughout prosecution, until the application issues as a patent, and may be discharged by disclosing all relevant information to the attorney or agent who is handling prosecution of the application. In addition to patents and publications, the duty of disclosure extends to related patent applications pending in the Patent Office and Office Actions issued in these pending applications and corresponding foreign applications.

The duty of disclosure also extends to "secret" prior art. "Secret" prior art is art which is not public, has not been published, was obtained from an outside source, and was used in or is closely related to the invention of the application. The following example is provided to illustrate a case involving "secret" prior art:

• An employee of Corporation A attends a seminar of the unpublished research of an outside scientist. The information that the employee receives is later modified to produce an invention, for which a patent application is filed. The employee must disclose the information received from the outside scientist to the Patent Office. This may be done by providing a copy of the presentation of the outside scientist or a summary of the presentation as remembered by the employee.

In order to comply with the ongoing duty to disclose, Evan Law Group files three types of documents with the PTO:

• Information Disclosure Statements
• Related Case Statements
• Related Document Statements

An Information Disclosure Statement (IDS) discloses to the Patent Office all known printed publications, such as journal articles and patents, which are relevant to the invention. During the preparation of an IDS, the application and associated files are reviewed for document citations, which are listed on a form PTO-1449. A request is also made to the client to provide a list of all known publications and patents relevant to the invention, and these are also listed on a form PTO-1449. A copy of each document, except US Patents and US published applications, is included in the filing. If a document was not submitted to our office, we will attempt to locate and, if necessary, purchase the document. As a result, the costs associated with application preparation can be reduced by thorough disclosure and by providing a copy of each relevant publication.

A Related Case Statement cites related applications to the Patent Office. We determine which applications are directed to related or similar inventions, and then confirm our selection with the client along with a request for any application not being handled by Evan Law Group directed to related or similar inventions. We then provide this list of related application to the Patent Office. During prosecution, an examiner may reference co-pending applications to determine if a double patenting or obviousness-type double patenting rejection is appropriate.

A Related Document Statement cites Office Actions between related cases. Such cross-citation requirements are relatively new and evolved out of a case recently decided by the Court of Appeals for the Federal Circuit (CAFC)¹. In that case, the CAFC found inequitable conduct for failure to cross-cite Office Actions in related cases, where arguments made in one Office Action were relevant to those made in another, ultimately holding the patent unenforceable. A copy of each related document, along with a notation of the application it originated from, is provided to the Patent Office. Other documents which should be provided to the Patent Office as part of the duty of disclosure, but which are not publications (such as a description of "secret" prior art) are also submitted as a Related Document Statement.

Legal Disclaimer

This information should not be considered as, or as a substitute for, legal advice and is not intended to nor does it create an attorney-client relationship.

¹See McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897, (Fed. Cir. 2007).