How To Comply with your Duty of Disclosure

Patent law has many traps for the unwary client because it is unique in many ways. We outlined some of these key pitfalls in a the last episode to educate and to further minimize the risks that could potentially arise. 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.

We also discuss three things you need to do to comply with your Duty Of Disclosure:

  1. A Strange and Strict Requirement
  2. The Deadly Consequences of Failing to Comply with the Duty of Disclosure
  3. How To Fulfill Your Obligations Under the Duty of Disclosure

There are so many ways a software patent can be valuable to you. For further information, you can connect with us via our website at




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