What types of information from litigation are considered material to patent examination?
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.
According to MPEP 2001.06(c), several types of information from litigation are considered material to patent examination:
- Evidence of possible prior public use or sales
- Questions of inventorship
- Prior art references
- Allegations of fraud, inequitable conduct, or violation of duty of disclosure
- Assertions made during litigation that contradict statements made to the examiner
- Defenses raised against the validity of the patent
The MPEP emphasizes: “Examples of such material information include evidence of possible prior public use or sales, questions of inventorship, prior art, allegations of ‘fraud,’ ‘inequitable conduct,’ and ‘violation of duty of disclosure.’ Another example of such material information is any assertion that is made during litigation and/or trial proceeding which is contradictory to assertions made to the examiner.”
This information is considered material because it can significantly impact the patentability of the claimed invention or the validity of the patent.