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question about duty to disclose

Postby sandrawhit » Tue Sep 14, 2010 10:39 am

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Hi!

I was wondering if anyone knows the answer to this question.

What happens if you have a patent pending and you see a product that came out on the market around the same time that you applied for the patent that is related to one of the claims on your patent application? I read somewhere that you are supposed to disclose information about the patentability of your patent to the patent office. Does this count as something you are supposed to disclose?

From my understanding it doesn't qualify as prior art because it wasn't public before my invention was invented or 1 year before my patent application. Does that make a difference?

thanks!
Sandy

Re: question about duty to disclose

Postby Scrupulous » Tue Sep 14, 2010 12:35 pm

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sandrawhit wrote:Hi!

I was wondering if anyone knows the answer to this question.

What happens if you have a patent pending and you see a product that came out on the market around the same time that you applied for the patent that is related to one of the claims on your patent application? I read somewhere that you are supposed to disclose information about the patentability of your patent to the patent office. Does this count as something you are supposed to disclose?

From my understanding it doesn't qualify as prior art because it wasn't public before my invention was invented or 1 year before my patent application. Does that make a difference?

thanks!
Sandy


It sounds like it may be your call, Sandy, more or less.

You have a duty to disclose anything that MAY affect patentability. But that doesn't mean you couldn't determine that on your own. Although an item in production by the time you file could very well have been invented before yours, you probably have no direct evidence of that. For all you know, it could've been after. And AFAIK, you do not have a duty to investigate their date of invention (though you might be so inclined).

I'm assuming this is a standard application, and the answer is... it's up to you. If it were a provisional, then the answer would be no, you would wait to disclose it with the standard filing if you were gonna do it at all, as no examination is applied to a provisional.

The bottom line is whether the product reads on your claim. If it does, then you kinda have a duty to disclose it. If it only relates in a non-obvious way, then I say maybe disregard it for lack of compelling info. And yes, this could be a situation where the inventor gets to decide what is obvious and what is not.

Re: question about duty to disclose

Postby sandrawhit » Tue Sep 14, 2010 4:28 pm

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Thank you for taking the time to answer my question! Your response makes me think of other questions. But I think I should start a new topic for them.

Re: question about duty to disclose

Postby Scrupulous » Sat Sep 18, 2010 8:43 am

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Sandy, if you decide to disclose it with your app, you may not want to wait too long to do it. Depending on when you filed it, they may need more time to consider it.

Just fax in a sb008b, like the sample one below, to the USPTO main fax # 571-273-8300, and I'm sure they'll accept it. Call back in a couple weeks after that, to their main phone # 800-786-9199 to check up on it...

Sample IDS - 8b.jpg
for non-patent references

Re: question about duty to disclose

Postby sandrawhit » Tue Sep 21, 2010 10:35 am

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Thank you once again. I really appreciate it!

Re: question about duty to disclose

Postby Scrupulous » Tue Sep 21, 2010 11:26 am

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You're welcome.

Let us know how it goes...

Re: question about duty to disclose

Postby apapage » Tue Sep 21, 2010 7:09 pm

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I always prefer to cite the reference even if it not prior art and even if I think it is not relevant to the patent claims. If the art is sited and considered by the examiner, it can't come back to haunt you later in litigation. For example, lets say you don't disclose, your patent issues and the product is wildly successful. There are tons of infringers and you sue for 200m in damages. The first thing the defendant is going to do is to try to find art that would invalidate your patent. They will find the product that you noticed and they will find out that you knew about it without disclosing to the patent office. This now gives the infringer another defense (inequitable conduct), which increases your litigation costs and reduces the value of your patent because of this uncertainty.