[This is the third in a series of postings regarding the various proposals in the Patent Act of 2005.]

Duty of Candor in Front of the USPTO

The Code of Federal Regulations mandates that a patent is affected with a public interest and that this interest is best served when the USPTO is aware of and evaluates the teachings of all information material to patentability. Therefore, each individualassociated with the filing and prosecution of a patent application (including, but not limited to, the inventors and their attorneys) has a duty to disclose to the USPTO all information material to patentability. The penalty for failing to disclose a material reference is severe. No patent will be granted on an application where the duty of disclosure was violated through bad faith or intentional misconduct. Your attorney may also be subject to disciplinary proceedings. (Always a bad thing from our point of view!)

The proposed legislation is pro-patentee. Unless the withheld reference would result in a patent being unenforceable, then the patent remains valid. This should lessen the fear which results in patent prosecutors preparing kitchen sink disclosures which include lists of every patent they have ever laid eyes upon that might be deemed as possibly relevant to the application at hand. The whole process supports the legal fiction that the Patent Examiner has reviewed all the references cited in the disclosure and determined whether or not they affect patentability. This presumption then carries a higher burden to overturn during litigation.

But who really thinks that the Patent Examiners actually have time to review all those references and still get home before it is time to collect Social Security? Tailoring this duty will allow prosecutors the freedom to truly list those references that are actually relevant to the patent thus resulting in better communication between them and the USPTO and, hopefully, better examinations. If there is a downside to this proposal, it’s certainly not apparent.

Previous: Part 2. Assignee Filing and Best Mode.
Next Up: Part 4. Willful Infringement and Repeal of §271(f) for Software.

Today’s post comes from Guest Barista Ria Schalnat, a registered patent attorney in Frost Brown Todd’s Cincinnati office.

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