How should prior art be evaluated and submitted?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs 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. 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.” Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Guidance on Compliance with Duty of Disclosure Regardless of Materiality Standard MPEP 2000 When In Doubt, Submit Information MPEP 2004 Avoid Long Lists of Documents MPEP 2004 Permitted Evaluate Materiality of Closest Prior Art MPEP 2004 Permitted Limit Long Lists of Documents MPEP 2004 Disclosure of Prior Art Early In Prosecution MPEP 2004 Recommended Duty of Disclosure Materiality Revised Based on Therasense MPEP 2000 Duty of Disclosure to Adopt But-For Materiality Standard MPEP 2000 Highlight Significant Documents In Long Lists MPEP 2004 Duty of Disclosure for All Individuals MPEP 2004 Other Related FAQs 5 FAQs Collapse What are some best practices for complying with the duty of disclosure? What are the potential consequences of misrepresenting information in a patent application? What should be considered when dealing with foreign applicants or applications? How should patent applicants handle fore...