Under U.S. Patent law, inventors and other individuals 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 which is material to patentability of the claimed invention. Failure to disclose known material references may result in the invalidity of the granted patent. The duty of disclosure can be fulfilled by preparing and submitting an Information Disclosure Statement (IDS) to the USPTO.
An IDS can be submitted to the USPTO at any time during the prosecution of the application. However, if an IDS is submitted after receipt of the first office action, a fee will be assessed. Additionally, if an IDS needs to be submitted after a Notice of Allowance is received, the applicant will need to withdraw the application from allowance to have the IDS and cited references considered by the USPTO. This can be done by filing a Request for Continued Examination (RCE).
Upon filing the application, if an applicant is aware of any prior art, he is well advised to notify his attorney (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 should be cited in an IDS, a patent attorney should be consulted to determine the appropriate course of action.
Submission of an IDS upon filing an application may allow the applicant to avoid fees for late submission of an IDS, and also allows 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 also avoid the withdrawal of the application from allowance.
Additional IDS submissions may be necessary during 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 need to be supplied to the USPTO. However, copies of non-patent documents and foreign references must be submitted. Translations of foreign language references should also be obtained and submitted to the USPTO, but note that a full translation of the reference is not required to fulfill the disclosure obligations.
Fulfilling the duty of disclosure to the USPTO can be a straightforward process if open lines of communication between assignee, inventors, and their patent attorneys are maintained. Communication of known art to the patent attorney allows the attorney 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 avoid fees and, most importantly, the withdrawal of the application from allowance. If you have any questions concerning this U.S. Patent Law requirement, please contact any of the patent attorneys at the Michaud-Kinney Group.
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