What are the consequences of failing to disclose foreign prior art?
Failing to disclose material prior art from foreign applications can have serious consequences for a U.S. patent. The MPEP 2001.06(a) cites the case of Gemveto Jewelry Co. v. Lambert Bros., Inc. to illustrate this point: “A patent was held invalid or unenforceable because patentee’s foreign counsel did not disclose to patentee’s United States counsel or…
Read MoreWhat are the consequences of failing to disclose copied claims?
Failing to disclose information about claims copied from a patent can have serious consequences. According to MPEP 2001.06(d): “failure to inform the USPTO of such information may violate the duty of disclosure.” Violating the duty of disclosure can lead to several potential consequences, including: Rejection or invalidation of the patent application Unenforceability of the resulting…
Read MoreWhat are the consequences of failing to disclose material information about copending applications?
What are the consequences of failing to disclose material information about copending applications? Failing to disclose material information about copending applications can have serious consequences. While MPEP 2001.06(b) does not explicitly state the consequences, it’s important to understand the potential outcomes: Inequitable conduct: Failure to disclose material information could be considered inequitable conduct, which may…
Read MoreHow should information from copending applications be cited to the examiner?
How should information from copending applications be cited to the examiner? According to MPEP 2001.06(b), information from copending applications should be cited to the examiner in a specific manner: “The examiner should be informed of any material information from the other application. The manner in which such information is brought to the attention of the…
Read MoreCan inventors disclose information directly to the USPTO?
Yes, inventors can disclose information directly to the United States Patent and Trademark Office (USPTO), especially if they are representing themselves (pro se inventors). The MPEP 2002.01 clearly states: “37 CFR 1.56(d) makes clear that information may be disclosed to the Office through an attorney or agent of record or through a pro se inventor”…
Read MoreWhat is the “broadest reasonable construction” in patent claims?
The “broadest reasonable construction” is a principle used in patent examination when interpreting patent claims. According to the MPEP Section 2001.05, this principle is applied when establishing a prima facie case of unpatentability: “A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance…
Read MoreWhat are some best practices for complying with the duty of disclosure?
The MPEP provides several helpful suggestions for complying with the duty of disclosure: Use letters and questionnaires to inform applicants about the duty of disclosure Use checklists to ensure compliance Ask questions about inventorship and best mode Carefully evaluate and explain the scope of claims, particularly the broadest claims Evaluate the materiality of prior art…
Read MoreWhat is the rationale behind the ‘all or nothing’ approach to patent unenforceability?
The ‘all or nothing’ approach to patent unenforceability due to inequitable conduct is based on the principle that such misconduct affects the entire patent right. MPEP 2016 cites the Gemveto Jewelry Co. v. Lambert Bros., Inc. case, which explains: “The gravamen of the fraud defense is that the patentee has failed to discharge his duty…
Read MoreHow should information from AIA trial proceedings be disclosed to patent examiners?
Information from AIA trial proceedings, such as inter partes reviews, post-grant reviews, and covered business method reviews, should be disclosed to patent examiners through an Information Disclosure Statement (IDS). The MPEP 2001.06(c) states: “In particular, material information that is raised in trial proceedings that is relevant to related applications undergoing examination should be submitted on…
Read MoreWhen did the current version of 37 CFR 1.56 become applicable?
The applicability of the current version of 37 CFR 1.56, particularly paragraph (c)(3), depends on the filing date of the patent application. According to the MPEP: “[Editor Note: Para. (c)(3) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.]” This means that for patent…
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