What are the responsibilities of patent practitioners regarding information from other government agencies?
Patent practitioners have a responsibility to review and potentially disclose information received from other government agencies that may be material to patentability. The MPEP 2015 advises: “Similarly, each individual with a duty to disclose, or party with a duty of reasonable inquiry, should review documents it receives from other Government agencies to determine whether the…
Read MoreHow does the paragraph IV certification process relate to USPTO disclosures?
The paragraph IV certification process, typically associated with generic drug applications to the FDA, can generate information material to patentability that should be disclosed to the USPTO. According to MPEP 2015: “Consequently, to assist USPTO staff in evaluating patentability effectively and efficiently, the party receiving a paragraph IV certification should review such documents to determine…
Read MoreHow does market testing and commercialization information relate to patent disclosures?
Market testing, marketing, and commercialization activities can produce information material to patentability that should be disclosed to the USPTO. The MPEP 2015 states: “Activities or documents associated with market testing, marketing, or commercialization by the patent applicant can also be material to patentability, and therefore, when material, should be disclosed to the USPTO.” This requirement…
Read MoreWhat are the duties of disclosure and reasonable inquiry in dealings with other government agencies?
Individuals with a duty to disclose or parties with a duty of reasonable inquiry must ensure consistency in statements made to the USPTO and other government agencies regarding claimed subject matter. The MPEP 2015 states: “Each individual with a duty to disclose, or party with a duty of reasonable inquiry, should ensure that the statements…
Read MoreWhat are the consequences of withholding material information from the USPTO?
Withholding material information from the USPTO while providing it to other government agencies can lead to serious consequences, including findings of inequitable conduct. The MPEP 2015 cites a relevant case: “In Bruno Independent Living Aids, Inc. v. Acorn Mobility Services, Ltd., 394 F.3d 1348, 1354, 73 USPQ2d 1593, 1598 (Fed. Cir. 2005), the U.S. Court…
Read MoreWhat are the implications of deliberately suppressing material information in patent proceedings?
Deliberately suppressing material information in patent proceedings can have severe consequences, including the refusal to enforce patents. The MPEP 2015 cites Supreme Court precedents: “The U.S. Supreme Court has refused to enforce patents where deliberate steps were taken to suppress material information. See, e.g., Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240, 19…
Read More