What information from related litigation or trial proceedings must be disclosed to the USPTO?

According to MPEP 2001.06(c), any material information arising from litigation or trial proceedings related to the subject matter for which a patent is being sought must be disclosed to the USPTO. This includes:

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

The MPEP states: “Where the subject matter for which a patent is being sought is or has been involved in litigation and/or a trial proceeding, or the litigation and/or trial proceeding yields information material to currently pending applications, the existence of such litigation and any other material information arising therefrom must be brought to the attention of the examiner or other appropriate official at the U.S. Patent and Trademark Office.”

To learn more:

• litigation
• trial proceedings
• material information
• duty of disclosure
• patent examination