The Importance of Disclosing Material Information in the Patent Process

You may ask whether obtaining a patnet is a complex process. The answer is it is a complex process. It requires careful attention to detail. It requires full transparency. That is why it is important to speak with a patent attorney as soon as possible to make sure you are properly and fully disclosing our invention. As provided in 37 CFR 1.56, those involved in the filing and prosecution of a patent application have a duty of candor and good faith in dealing with the US Patent and Trademark Office (USPTO). Applicant’s must disclose all information known to be material to the patentability of the claimed invention. This duty extends to each pending claim until the claim is cancelled, withdrawn, or the application becomes abandoned.

The purpose of 37 CFR 1.5 is to ensure that the USPTO has all of the necessary information to properly evaluate the patentability of the claimed invention. A patent is a legal monopoly granted to the inventor. As such, the public has an interest that the patent examination process is thorough and transparent. When fully disclosing their invention to the USPTO, applicants can help to ensure that the patent granted is a true reflection of the invention and its novelty.

In addition to disclosing information that establishes or refutes the patentability of a claim, applicants SHOULD review prior art cited in search reports carefully because it will help to inform you. This includes prior art of foreign patent offices and any information that is closely related to the claims being made. This can help to identify any potential issues with the patentability of the claimed invention and allow the applicant to address them before the application is granted.

It’s important to note that the duty to disclose material information applies to all individuals associated with the filing and prosecution of the patent application, including inventors, attorneys and agents, and anyone else who is substantially involved in the preparation or prosecution of the application. Failure to disclose material information can result in the denial of a patent or the invalidation of a granted patent.

The duty to disclose material information in the patent process is an important aspect of the patent examination process. By fully disclosing all relevant information, patnet applicants help to ensure that the patent is ultimately granted truly reflects the invention and its novelty, and ultimately serve the best interests of the public.

It’s important to note that the duty to disclose material information applies to all individuals associated with the filing and prosecution of a patent application. This includes inventors, attorneys and agents, and anyone else who is substantially involved in the preparation or prosecution of the application.

Individuals other than the attorney, agent, or inventor may comply with this duty by disclosing the information to the attorney, agent, or inventor. In a continuation-in-part application, the duty to disclose also extends to any new matter added to the application, as well as any information that is material to the patentability of the subject matter added by the continuation-in-part.

It’s worth noting that the duty to disclose material information is ongoing and applies until the patent application becomes abandoned or all claims are cancelled or withdrawn from consideration. This means that even if a patent has been granted, it is still the responsibility of the applicant to disclose any new information that may be material to the patentability of the claimed invention.

Violating the duty to disclose material information can have serious consequences. No patent will be granted on an application in which fraud on the office was practiced or attempted, or the duty of disclosure was violated through bad faith or intentional misconduct. In addition, a granted patent may be held invalid if it is later discovered that material information was not disclosed during the patent examination process.

There have been numerous cases in which the failure to disclose material information has resulted in the denial of a patent or the invalidation of a granted patent.

For example, in Therasense, Inc. v. Becton, Dickinson and Co., the Federal Circuit held that the duty of candor and good faith requires an applicant to disclose prior art to the USPTO that is material to the patentability of the claimed invention. In this case, the applicant failed to disclose prior art that was material to the patentability of the claimed invention, and as a result, the patent was held invalid.

Another example is In re Klopfenstein, where the applicant argued that the failure to disclose certain material information was an innocent mistake and therefore did not rise to the level of intent required to establish a violation of the duty of disclosure. However, the court disagreed and held that the failure to disclose the material information, regardless of intent, was a violation of the duty of candor and good faith. As a result, the patent was held invalid.

This demonstrate the importance of fulfilling the duty to disclose material information in the patent process. Failing to fully disclose, an applicant risks having their patent application denied or their granted patent invalidated. That is why it is essential that all individuals associated with the filing and prosecution of a patent application fulfill their duty to disclose material information to the USPTO.

In conclusion, all individuals associated with the filing and prosecution of a patent application should fulfill their duty to disclose material information. This helps to ensure that the patent granted is a true reflection of the invention and its novelty, and ultimately serve the best interests of the public.