6. What is ‘Ongoing Duty of Disclosure’ in US Patent Law?

Note: Our sixth tip in a series. To view previous articles please click here.

When meeting with inventors, one question that they often ask is “what will I have to disclose to the Patent Office?” This type of disclosure is not what is required for describing an invention in a patent application (see Tip #5). It is often ignored until later stages of the examination of a US patent application, but it can be critical even at the initial stages of preparing a patent application.

What does “Disclosure” mean??

Under US patent law, all information in the possession of the inventor, applicant and their representatives that is “material to patentability” must be disclosed to the US Patent Office (USPTO). Material to patentability means that the information might affect the patentability of a claimed invention.

All information!?

Yes! All information that is known or discovered during the course of the preparation and examination of a patent application may have to be disclosed to the USPTO as part of the examination process. Frequently, a patent applicant will become aware of such information as a result of pre-filing patentability searches.

Many times, an inventor has already performed a basic search of the patent and technical literature before a first meeting with a Patent Attorney. This is common especially with experienced inventors and can save time and money in determining whether there is an invention worth pursuing and whether patent protection is available or necessary.

Even if an inventor has performed a search, Patent Attorneys will often recommend performing a more formal prior art search for the client before drafting a patent application. This allows patent attorneys to both assess the patentability of a proposed invention, and to gain greater understanding of where the invention fits into the art as a whole and how it can best be claimed.

What information has to be disclosed?

All publications before the filing date of your patent application. Some examples include published patent applications and patents, articles from academic or technical journals, and all material accessible on the internet, including university publications that are only available from a university library. This includes references in all languages. For non-English language publications a complete or partial translation must be provided to the USPTO, along with a copy of the original publication.

In some instances, an inventor or a Patent Attorney is familiar with several references that describe similar or identical information, and it would be redundant to disclose them all. In such a case, while all of the references may be material, it may not be necessary to disclose them all to the USPTO, and an internal statement, such as an affidavit or memorandum, can be prepared that states the references are similar and that one was chosen for disclosure as representative of the other references. However, it is important to note that this can be very nuanced and should involve a conversation with your Patent Attorney to determine what to submit.

When does this information need to be disclosed to the USPTO?

The disclosure requirement is ongoing. Once a patent application is filed, and until it issues as a patent, there is an ongoing requirement to update the USPTO of any newly discovered information that may be “material to patentability.” For example, where a Patent Application is filed in several countries and parallel examinations reveal references that were not previously known to the Applicant, the Applicant is required to update the USPTO in a timely manner.

Honesty is the Best and Only Policy!

As a final note, always remember that honesty is the best and only policy for avoiding running afoul of the disclosure requirement. Although having to always update the Patent Office with additional disclosures may seem cumbersome and expensive, full compliance is the best way to ensure that this issue does not cause problems if the patent is ever litigated in the future.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let us know!