April 2006: Don't Keep Secrets from the Patent Office

When you file a patent application in the U.S., you are required to provide the Patent Office with any information you have about existing patents, products, and services that relate to your invention. This information is then provided to the patent examiner assigned to your case for use in determining whether your invention is patentable. Although it may seem strange, you are required to provide the Patent Office with certain kinds of information that can be used against you in the process of obtaining a patent.

This requirement can be a real trap for the unwary. First, it applies not only to the inventors and patent attorney, but also to "[e]ach individual associated with the filing and prosecution of a patent application." For example, if the President of a company is not an inventor on a particular patent application but is involved in preparing the application, then the President must provide the Patent Office with any relevant information in his or her possession.

Second, the requirement is relatively broad in that it requires disclosure of any information that is "material to patentability," not only of information about technology that is the same as or very similar to the technology for which patent protection is being sought.

Third, the requirement applies as long as the patent application is pending in the Patent Office. In other words, you must continue to disclose information that you learn about even after you file a patent application. For example, if you file a patent application today for a product, and a year from today you learn about a similar product that was on sale two years ago, you must disclose what you have learned to the Patent Office.

Because complying with this "duty of disclosure" requires such diligence, it is frequently used in attempts to invalidate (strike down) existing patents. For example, if a patent owner sues someone for infringing (violating) a patent, the defendant may counter by claiming that the patent owner failed -- often many years earlier -- to provide the Patent Office with a copy of a conference paper that was sitting in a file cabinet of one of the inventors. If the defendant is successful, the entire patent may be invalidated and thereby become worthless.

As a result, it is important for everyone involved in preparing and prosecuting patent applications to disclose all required information (including patents, patent applications, conference papers, and competitors products) to their patent attorney so that such information may be provided to the Patent Office. We regularly advise our clients on these and other techniques for increasing the defensibility of their patents. Please do not hesitate to contact us should you have any questions about the information provided herein.