How should prior art be evaluated and submitted?
When evaluating and submitting prior art:
- Carefully evaluate the materiality of prior art against the broadest reasonable interpretation of the claims
- Consider whether the prior art is the closest to the claimed invention
- Submit information promptly, even if discovered late in prosecution
- Avoid submitting long lists of documents; highlight the most significant ones
- Be cautious with continuation-in-part (CIP) applications where intervening material may exist
As stated in MPEP 2004: “It is desirable to pick out the broadest claim or claims and measure the materiality of prior art against a reasonably broad interpretation of these claims.” Additionally, “When in doubt, it is desirable and safest to submit information.”
To learn more:
Topics:
MPEP 2000 - Duty Of Disclosure,
MPEP 2004 - Aids To Compliance With Duty Of Disclosure,
Patent Law,
Patent Procedure