What to Do With Art That Is Material to the Patentability of Your Pending US Patent Application

Below U.S. Patent law, inventors and other people substantively involved with the preparation and/or prosecution of the application, such as assignees and patent attorneys, have a duty to disclose to the U.S. Patent and Trademark Office (USPTO), information and facts which is material to patentability of the claimed invention. Failure to disclose known material references might result in the invalidity of the granted patent. The duty of disclosure can be fulfilled by preparing and submitting an Facts Disclosure Statement (IDS) to the USPTO.

An IDS can be submitted to the USPTO at any time during the prosecution of the application. Nevertheless, if an IDS is submitted immediately after receipt of the 1st office action, a fee will be assessed. Additionally, if an IDS needs to be submitted following a Notice of Allowance is received, the applicant will want to withdraw the application from allowance to have the IDS and cited references considered by the USPTO. This can be accomplished by filing a Request for Continued Examination (RCE).

Upon filing the application, if an applicant is conscious of any prior art, he is nicely advised to notify his lawyer (if applicable) of the prior art so an IDS can be included with the initial filing of the application. If an applicant or assignee is unsure of whether a reference ought to be cited in an IDS, a patent attorney must be consulted to identify the proper course of action.

Submission of an IDS upon filing an application might allow the applicant to prevent charges for late submission of an IDS, and also permits the USPTO to conduct an examination of the application in view of the already known prior art. Timely disclosure of prior art via submission of an IDS may perhaps also stay away from the withdrawal of the application from allowance.

Additional IDS submissions could be required for the duration of the prosecution of the application to make the USPTO aware of prior art that is cited in corresponding foreign applications.

Copies of U.S. Patents and U.S. Published Patent Applications do not want to be supplied to the USPTO. However, copies of non-patent documents and foreign references should be submitted. Translations of foreign language references ought to also be obtained and submitted to the USPTO, but note that a full translation of the reference is not necessary to fulfill the disclosure obligations.

Fulfilling the duty of disclosure to the USPTO can be a straightforward method if open lines of communication in between assignee, inventors, and their patent attorneys are maintained. Communication of identified art to the patent lawyer enables the lawyer to draft a stronger patent and also allows the timely disclosure of the known prior art to the USPTO. As noted above, timely disclosure may well stay clear of fees and, most importantly, the withdrawal of the application from allowance. If you have any concerns concerning this U.S. Patent Law requirement, please contact any of the patent attorneys at the Michaud-Kinney Group.