The duty of disclosure during the patent process is one of the most crucial aspects of the entire application. You do not want to go through the work of getting an invention patented only to find out you will not be patented because you did not disclose pertinent information to the USPTO. It is best to provide more information than you may think necessary, rather than not enough.

Duty of Disclosure to the USPTO

Failing to disclose all relevant information to the USPTO, or the United States Patent and Trademark Office, could have bad results, including invalidating your patent and deeming it unenforceable.

All who are involved in the filing and the prosecution of a patent application have a duty to make all disclosures to the USPTO of any information that is required when assessing whether or not an invention has patentability, which is a major part of applying for a patent. This will not apply to the inventor only, but also any person that is involved with applying for the patent.

Relevant information includes any that the United States examiner will need to take into regard during application examination. This includes anything that could make the application unable to be patented. Should there be any doubt or issue with regard to relevance, it is ideal to disclose all the information so the examiner has the opportunity to take it all into consideration.

These categories should be of importance when considering relevance:

·      Any patent or document that is related to an invention or in the same field as the invention

·      A product or process that belongs to you or someone else that is similar to your invention

·      Other United States patents or applications that you have that are within the same realm of technology

·      Any additional information that you may consider to be relevant

Relevant information also includes the sale, use, advertisement or offer for sale of the invention. The assumption is that these activities have not taken place prior to the application since it would affect any additional applications.

The disputes about the ownership of the invention, if any, or the identification of the inventors are also relevant information. The inventor has to sign and submit documentation that says he or she understands and agrees to disclosure.

Rule 56 (37 CFR 1.56) states the duty to disclose with the USPTO. In general, those who are involved in the filing of a patent application have a good faith expectation when dealing with the USPTO. This includes the duty of disclosing any information that you have that is related to the patent of an invention.

Not providing the USPTO with knowledge of art known by the inventor prior to patent can cause the unenforceability of the patent under inequitable conduct. This renders the patent entirely useless.

Inequitable conduct is determined if:

·       It was a material failure

·       The person charged with the duty to disclose meant to mislead through the misrepresentation or failure to disclose material information.

Information about the patent is going to be fresher on the mind of the person who has the duty to disclose and will not lose or misplace it. Complying with the duty to disclose is very straightforward and simple.

A patent attorney will look for input from inventors and assignees, if applicable, and will disclose any references to the patent office. The fee for legal assistance can range from $100 to $200, based on the time used when speaking with the client, getting copies of necessary documents, and the like. The USPTO fee is $180 or less for each file IDS, based on the entity status and the time of the filing.

Only identifying a known prior art reference within the body of application is not sufficient. Though not recommended, many practitioners will include comments that distinguish every reference. These comments can be helpful to any examiner, but is not safe to the applicant since the file history could be used against the holder of the patent during prosecution and beyond. If there are no comments, the filing of an IDS will not be construed as an admission that information will be considered material.

If you need help with understanding duty of disclosure, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law, and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.