Why doesn’t the USPTO investigate duty of disclosure issues during patent examination?

The USPTO does not investigate duty of disclosure issues during patent examination for several reasons:

• Lack of appropriate tools: The USPTO lacks the necessary tools to effectively deal with these complex issues.
• Sensitive nature: Duty of disclosure and inequitable conduct are sensitive matters with potential significant impact on a patent.
• Judicial doctrine: Inequitable conduct is a judicial application of the doctrine of unclean hands, which is more appropriately handled by courts.
• Cost and time: Investigating these issues would significantly increase the expense and time involved in obtaining a patent.
• Limited benefit: Such investigations would provide little to no benefit to the patent owner or other interested parties.

As stated in MPEP 2010: “Because of the lack of tools in the Office to deal with this issue and because of its sensitive nature and potential impact on a patent, examiner determinations generally will not deter subsequent litigation of the same issue in the courts on appeal or in separate litigation.”

To learn more:

• duty of disclosure
• patent examination
• USPTO policy
• inequitable conduct
• patent litigation