How should information from related litigation and trial proceedings be handled?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
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, 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.”
Material information may include:
- 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 contradictory to those made to the examiner
This information should be submitted on an Information Disclosure Statement for the examiner’s consideration.