A critical requirement when prosecuting a U.S. patent application is the duty of disclosure (35 C.F.R. §1.56), which is placed on each individual associated with the filing and prosecution of a patent application, to disclose to the U.S. Patent and Trademark Office (USPTO) all information known to that individual to be material to patentability; that is, a reasonable examiner would consider it important in deciding whether to allow the application. The duty is ongoing from filing of the application through issuance of the U.S. Patent. However, it only requires material information actually known to those individuals be disclosed, and does not require a search to be conducted.
The duty of disclosure is satisfied by submitting one or more Information Disclosure Statement (IDS) to the USPTO listing relevant patents, patent applications, and other published documents or information. Depending on the nature of the disclosure, a copy of the document may also need to be provided to the USPTO.
The consequence for failing to comply with the duty of disclosure can be severe. Willful failure to provide material information can result in a later ruling of unequitable conduct, rendering the subsequently issued patent unenforceable; or even result in an action for damages against the patentee.
The manner in which the IDS can be filed (and associated costs) vary depending on the prosecution stage. To view the prosecution stages, please click here.
Informal IDS which will not be considered
Failure to submit prior art is a breach of duty only when the prior art is material, and the requisite materiality required to establish inequitable conduct is but-for materiality, meaning that the USPTO would not have allowed a claim had it been aware of the undisclosed prior art (Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011)). If the likelihood of an inadvertently undisclosed reference being considered material under the “but-for” standard is very low (e.g., when it is substantively cumulative of what’s already on the record), and the patent is unimportant and not expected to be asserted in an enforcement action, then an applicant may be satisfied by simply submitting the IDS to be placed in the file, knowing it would not be formally considered by the USPTO. However, if a patent is of particular commercial or strategic importance, then this option is insufficient to ensure that the prosecution record is as perfected as possible.
The QPIDS pilot program
If the issue fee has been paid but the patent has not yet issued, the IDS can be filed using the QPIDS program if accompanied by (1) a 1.97(e) statement, and (2) a petition to withdraw from issue and a “conditional” RCE. If the examiner then determines that no item of information in the IDS necessitates reopening prosecution, the RCE fee will be refunded and the USPTO will issue a corrected notice of allowability.
A reissue application may be filed when a patent, through error, is deemed wholly or partly inoperative or invalid. Filing of a reissue application requires the applicant to admit a defect in the original patent, which can be “a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim …” As there is no explicit provision that the “defect” can be a failure to submit an IDS reference, the basis of using reissue applications for the purpose of filing the IDS is unclear. However, it has been established that the reissue error may be directed solely to the failure to previously present narrower claims, which are being added by the reissue application (In re Tanaka, 640 F.3d 1246 (Fed. Cir. 2011)). If this scenario is applicable, then the IDS can be filed in the reissue application.
Finally, filing a reissue application has its risks: the examiner may raise new rejections with respect to the already-issued claims in the original patent, and these rejections may not be limited to those based on the same prior art previously examined, or even prior art in general (i.e., can be lack of enablement, unity etc.).
Briefly, supplemental examination may be requested by a patent owner to consider, reconsider, or correct information believed to be relevant to the patent, at any time during its period of enforceability.
Unlike reissue applications, a request for supplemental examination does not require a patent owner to admit to a defect in the patent. Within 3 months of the request, the USPTO will issue a certificate indicating whether the information presented in the request raises a “substantial new question of patentability” (SNQ). If so, an ex parte reexamination will be required; and if not, the request ends right here. Notably, a patent cannot be held unenforceable based upon information that was considered, reconsidered, or corrected during a supplemental examination. And further, the supplemental examination process is faster than reissue.
The downside to supplemental examination is that it is more expensive than reissue, and as indicated above, results in an ex parte examination if the request results in a determination of a SNQ, which limits further options. Unlike in the case of a reissue, which makes all patent prosecution options available, including an RCE, the patent owner cannot stop an ex parte reexamination, and there is no option to file a RCE. The only option after a “final” office action during reexamination is appeal. Moreover, unlike supplemental examination, a reissue application can be abandoned.
As the difficulty and cost associated with IDS submission are increased during later stages of the prosecution process, it is recommended that applicants pay particular attention to the duty of disclosure early on, and continue to promptly alert their patent attorneys of new information they become aware of, including documents issued and cited in connection with related foreign applications, up until patent issuance. Further, it is highly recommended that applicants check for compliance with the duty of disclosure before paying the issue fee, as afterwards the ability to do so becomes significantly more limited and costly.
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