How to Comply with your Duty of Disclosure

Patent law has many traps for the unwary client because it is unique in many ways.  I’ve outlined some of these key pitfalls in a previous blog posting to educate clients and to further minimize the risks to them. One of the most important things for you to know about as a patent owner is the “duty of disclosure”—your legal obligation to notify the US Patent and Trademark Office (USPTO) about “prior art.” Failure to comply strictly with the duty of disclosure can cause your patents to be invalidated.  I’ve put together a list of tasks client should do to comply with the duty of disclosure and how law firms should help you to comply with the duty of disclosure so that you don’t put your company’s patents in jeopardy.

When you submit a patent application, you—and your law firm—have a legal obligation to submit all relevant prior art that you and we know about to the USPTO. In this context, “prior art” is any information about an invention or similar inventions that existed at or before the time of filing a patent application for the invention, such as:

  • publications—such as patents and patent applications owned by you or your competitors, journal articles, and websites;
  • public uses of products (such as at trade shows), such as the product covered in the patent application, or similar products from you or competitors; and
  • sales and offers to sell the product covered in the patent application, or similar products from you or competitors.

I’ve found that many are surprised to find that they must submit information to the USPTO about their own prior art, such as journal articles they (or their employees) have published, or even their own previous patents or patent applications.  This is because the USPTO is allowed to use your own prior art against you in patent applications that you file.

Here’s what you need to do to comply with your Duty Of Disclosure:

A Strange and Strict Requirement

The duty of disclosure is a strange and surprising legal requirement in many ways.  In most other types of legal proceedings, you are not required to provide evidence that can be used against you.  For example, the Fifth Amendment permits you not to testify against yourself in a criminal trial. In stark contrast to this, the duty of disclosure obligates you to submit information about prior art that the patent examiner can then use against you to reject your patent application.

The duty of disclosure applies to every single person working on a patent—such as all of the inventors, the lawyer(s) working on the patent application, and even your CEO or other executives if they work on the patent application, even if they are not inventors on the patent application.

Another unusual and counterintuitive aspect of the duty of disclosure is that it continues to apply even after we have filed a patent application for you, until that patent application is either granted as a patent or is abandoned.  This means that the duty of disclosure can continue to apply for years after we have filed a patent application for you. If you find out about a competitor’s old but relevant patent several years after we have filed a patent application for you, and before that patent application has been granted or abandoned, you must send that competitor’s patent to us so that we can submit it to the USPTO.

Furthermore, the duty of disclosure does not obligate us to search for prior art.  Instead, we are only required to submit the prior art that we know about. As a result, we strongly recommend that our clients not do their own prior art searching, and instead leave that job to us, so that we can minimize the amount of prior art that we need to submit to the USPTO, and so that we can ensure that any prior art that we know about is submitted to the USPTO in compliance with the duty of disclosure. We work behind the scenes for you to submit any prior art that we receive in connection with your patent applications to the USPTO in order to comply with the duty of disclosure on your behalf.

The Deadly Consequences of Failing to Comply with the Duty of Disclosure

We are harping on the duty of disclosure because failing to comply with the duty of disclosure can mean death for a patent.  Failing to submit even a single piece of relevant prior art in your possession can lead to your patent being “invalidated”—meaning that the patent is nullified and rendered unenforceable, so that you cannot stop competitors from copying your invention, just as if the patent had never been granted in the first place.  All of the time and money you had invested in the patent will be wasted.

You might ask: “How would anyone ever know if I found a patent but didn’t submit it to the USPTO?” The easy answer is that in today’s digital age, every document you ever save and every email you ever send or receive is likely to linger somewhere forever.  Then, when you attempt to sue a competitor for patent infringement, even years later, that competitor will request all of your digital data in a legal process known as “discovery.” Even Bill Gates was snagged by such discovery requests back in the great “browser wars” of the 1990s.  You should assume that any prior art that is ever in your possession can and will be discovered by your competitors if you ever sue them for patent infringement.

And if you are found to possess even a single piece of prior art that we did not submit to the USPTO, your patent can be invalidated.  Nearly every competitor who is sued for patent infringement immediately alleges that the patent owner has failed to submit all required prior art to the USPTO, because they know just how deadly failure to comply with the duty of disclosure can be for a patent.

How To Fulfil Your Obligations Under the Duty of Disclosure

The easy way to ensure that you comply with your duty of disclosure if you hire us is to go overboard and provide us with any patent, patent application, journal article, website, product brochure, etc. that you think might possibly qualify as prior art, even if it stretches your imagination.  Then leave it to us to decide whether we need to submit every piece of prior art to the USPTO. “Better safe than sorry” is our motto when it comes to the duty of disclosure.

We also recommend that you limit involvement in each of your patent applications to employees on a strict “need to know” basis, in order to limit the number of people who are obligated to submit prior art according to the duty of disclosure.  If you involve a large number of people in your company’s patent applications, then everything that is known by all of those people will need to be submitted to the USPTO, which only increases the risk that something will fail to be submitted.

Ways that Blueshift can be Your Guide to the Duty of Disclosure

When we at Blueshift IP are responsible for your patent applications, we will guide you through the duty of disclosure based on our extensive experience.  At every step of the way we will request necessary information from you and help you to determine what you need to provide to us. And if we perform prior art searching for you, we will be sure to submit any prior art we obtain directly to the USPTO without your involvement.  The same applies to any prior art that we receive from any other source, such as the USPTO or foreign patent offices.

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