What are the consequences of failing to disclose material information from litigation?
Failing to disclose material information from litigation can have serious consequences, as highlighted in MPEP 2001.06(c). The MPEP cites a significant case: “See Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1258-59, 43 USPQ2d 1666, 1670-71 (Fed. Cir. 1997) (patent held unenforceable due to inequitable conduct based on patentee’s failure to disclose…
Read MoreWhat 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 the best mode in a patent application?
What are the consequences of failing to disclose the best mode in a patent application? Failing to disclose the best mode in a patent application can have serious consequences, although these have been somewhat mitigated by the America Invents Act (AIA). The potential consequences include: Rejection during examination: The USPTO may reject the application if…
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 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 MoreHow does the USPTO handle fraud, inequitable conduct, or duty of disclosure issues in reissue applications?
The USPTO does not investigate or reject reissue applications under 37 CFR 1.56. As stated in MPEP 1448: “The Office will not comment upon duty of disclosure issues which are brought to the attention of the Office in reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer…
Read MoreWhat are the special circumstances for rejecting a reissue application based on fraud or inequitable conduct?
Special circumstances for rejecting a reissue application based on fraud or inequitable conduct include: An explicit admission of fraud, inequitable conduct, or violation of the duty of disclosure A judicial determination of fraud, inequitable conduct, or violation of the duty of disclosure MPEP 1448 states: “An admission or judicial determination of fraud, inequitable conduct, or…
Read MoreDo I need to resubmit all ‘References Cited’ from the original patent in a reissue application?
No, you are not required to resubmit all ‘References Cited’ from the original patent in a reissue application. The MPEP clearly states: “Note that the Office imposes no responsibility on a reissue applicant to resubmit, in a reissue application, all the ‘References Cited’ in the patent for which reissue is sought.” However, it’s important to…
Read MoreWhat is Form Paragraph 14.11.01 used for in reissue applications?
Form Paragraph 14.11.01 is used by patent examiners in the first action of a reissue application to remind applicants of their continuing obligations under 37 CFR 1.178(b) and 37 CFR 1.56. The MPEP states: “Form paragraph 14.11.01 may be used to remind applicant of the duties to timely make the Office aware of (A) any…
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