What is the duty of disclosure in inter partes reexamination proceedings?
The duty of disclosure in inter partes reexamination proceedings is defined in 37 CFR 1.933. It requires that: “Each individual associated with the patent owner in an inter partes reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information…
Read MoreHow does the duty of disclosure apply to information in foreign counterpart applications?
How does the duty of disclosure apply to information in foreign counterpart applications? The duty of disclosure extends to information in foreign counterpart applications. MPEP 2001.06(b) states: “The examiner, and by inference the applicant, is charged with knowledge of the existence of the copending application.” This principle applies to foreign counterpart applications as well. Applicants…
Read MoreWhat are the disclosure requirements for information related to regulatory review, such as FDA submissions?
Information submitted to regulatory review bodies, such as the U.S. Food & Drug Administration (FDA), may be material to pending patent applications or reexamination proceedings and should be disclosed to the USPTO. The MPEP states: “Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and…
Read MoreHow should ongoing litigation be disclosed during the patent examination process?
For ongoing litigation related to a pending patent application, the MPEP 2001.06(c) provides guidance on how to disclose this information: Promptly bring the litigation to the attention of the USPTO. Provide enough information to clearly inform the Office of the nature of the issues in the litigation. Submit relevant litigation materials that are “material to…
Read MoreHow should information from related litigation and trial proceedings be handled?
Information from related litigation and trial proceedings, including those conducted by the Patent Trial and Appeal Board (PTAB), must be disclosed if it is material to pending related patent applications. 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,…
Read MoreWhat information from copending U.S. patent applications needs to be disclosed?
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes: Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee Applications that disclose similar subject matter Prior art references…
Read MoreIs information about copied claims considered material under the duty of disclosure?
Yes, information about claims copied from a patent is considered material under the duty of disclosure. The MPEP 2001.06(d) clearly states: “Clearly, the information required by 37 CFR 41.202(a) as to the source of copied claims is material information under 37 CFR 1.56 and failure to inform the USPTO of such information may violate the…
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 MoreWhat are the consequences of failing to disclose material information in reexamination?
What are the consequences of failing to disclose material information in reexamination? Failing to disclose material information in reexamination proceedings can have serious consequences. While MPEP 2280 does not explicitly detail the consequences, it emphasizes the importance of the duty of disclosure: “The duty of disclosure requirements for individuals associated with the patent owner in…
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