What types of information from litigation are considered material to patent examination?

According to MPEP 2001.06(c), several types of information from litigation are considered material to patent examination:

• Evidence of possible prior public use or sales
• Questions of inventorship
• Prior art references
• Allegations of fraud, inequitable conduct, or violation of duty of disclosure
• Assertions made during litigation that contradict statements made to the examiner
• Defenses raised against the validity of the patent

The MPEP emphasizes: “Examples of such material information include evidence of possible prior public use or sales, questions of inventorship, prior art, allegations of ‘fraud,’ ‘inequitable conduct,’ and ‘violation of duty of disclosure.’ Another example of such material information is any assertion that is made during litigation and/or trial proceeding which is contradictory to assertions made to the examiner.”

This information is considered material because it can significantly impact the patentability of the claimed invention or the validity of the patent.

To learn more:

• material information
• litigation
• patent examination
• prior art
• inventorship
• inequitable conduct