Duty of disclosure Questions?

By Dennis Crouch

1. Joe (the inventor / patent applicant) knows that Mathilda (a third party) has information material to the question of patentability of his pending patent application. However, Joe does not have the underlying material information. Is Joe under a duty to disclose Mathilda’s identity?

2. Competitor sends Joe a package of prior art and an explanation of why the prior art renders Joe’s pending application unpatentable. What are joe’s disclosure duties here?

145 thoughts on “Duty of disclosure Questions?

  1. No one has raised the question of why we still have a duty to disclose. The duty does not exist in Europe. Why not? One reason is because there is no such thing as secret prior art in Europe. Now that there is no on sale bar for secret sales/offers to sell, isn’t it time to abolish the duty? It has caused no end of mischief and grief over the years. Isn’t it now obsolete?

  2. As an initial matter, pay attention to the law and to ethics.

    Also, take anyone who maintains that no intellectual honesty is required “because this is just a blog, and not a court” and give all due consideration to the rampant policy pounding that has no facts to pound and no law to pound.

    The spin and outright 1ies (prohibit…?) continue to pour forth unabated.

    Intellectual honesty: try it.

  3. Regarding (2), I note that there is nearly universal agreement about how to deal with the references at least. On the other hand, two commenters (Ned and anon) seem to have left the reservation and, without any coherent explanation, have decided that communicating information to an applicant that is relevant to the patentability of the applicant’s pending claims is somehow an “unethical” or a “borderline criminal” (?!?!?) act.

    As an initial matter, it seems fair to ask: what the heck are these two guys smoking? There are no statutes forbidding such communications (and there never will be — ever heard of the First Amendment?). Where then does the ethical violation occur?

    Everyone needs to be reminded again that the public has a paramount interest in the proper functioning of the patent system such that invalid patents are not granted. Whether we are attorneys or merely citizens interested in minimizing the granting of invalid patents, our fundamental right and, arguably, our civic duty to communicate our concerns about invalidity directly or indirectly to patent applicants is always going to trump these nonsensical suggestions that the availability of “official channels” for such communications somehow “criminalizes” any communications not within those channels.

    As usual, with respect to the pathological lying blogtroll “anon”, at least, it staggers the mind that it would pretend to have any insights whatsoever into ethical considerations in any context, but particularly this one. On the other hand, nobody should be surprised that anon would argue in favor of a system that forbids people from publically discussing the validity of particular patents. That’s undoubtedly a huge fantasy for him and the patent txxbaggers.

    How many times have they pondered the wisdom of trying to sue a critic of a particular patent, I wonder? I’m not aware of any patent trolls pulling that trigger yet but I wouldn’t be surprised to see it happen.

    By all means: please bring it on. And please hire “anon” to represent you. He’s a True Believer, after all, which is pretty much the best you can hope for when engaging in that kind of behavior.

    1. without any coherent explanation

      LOL – I only provided rule and law. Yes, actual law seems to be beyond Malcolm’s coherent understanding level.

      Actually, that says a lot.

      1. I only provided rule and law.

        Anybody can do that. Watch this:

        Driving 140 miles/hr on a highway is not allowed in the US. There are traffic laws. Therefore, it is unethical to talk to people about how fast they are driving. Fun game!

        What you didn’t explain at all with your “rule and law” is why communicating information to an applicant that is relevant to the patentability of the applicant’s pending claims is somehow an “unethical” or a “borderline criminal” (?!?!?) act.

        You didn’t even come close to explaining that. And you did seem to be trying. But there’s some huge pieces missing from your argument. I am sure you will never be able to fill them. Nevertheless, for everyone else’s benefit, I thought I’d highlight your obnoxious hypocritical behavior so all may see.

  4. Guidance for answering these questions are in my article (THIS IS NOT LEGAL ADVICE): Brody, T. (2008) Duty to Disclose:Dayco Products v. Total Containment in The John Marshall Law School Review of Intellectual Property Law vol. 7:325﷓375. Cited by Judge Richard A. Posner in New Medium LLC v. Barco N.V. (N. Dist. Illinois, Eastern Division) March 18, 2009. 2009 U.S. Dist. LEXIS 21551.

    1. Tom,

      The issue is not really 1.56 (note I only had access to the abstract of your article – if you covered more, my apologies beforehand).

  5. #2 is causing some interesting debate. To me it seems simple: Let’s say an examiner writes a non-final. Is that a document produced after the filing date of the application but that, when combined with other information, establishes a prima facie unpatentability? Of course it is.

    Can a non-office employee do the same thing as an examiner? Sure. Then the only question remaining is if the source of the document somehow makes the logic unsound. Despite some people on this board doing all they can to convince me of the opposite, it’s a logical fallacy to attack the source rather than the logic.

    Clearly reasoning substantially similar to an office action must be turned over, the only question is how close the hypothetical page is.

    1. Let’s say an examiner writes a non-final. Is that a document produced after the filing date of the application but that, when combined with other information, establishes a prima facie unpatentability? Of course it is.

      I’m not sure I agree with your starting premise here, RG, but I suppose it comes down to how we define “establish.” I think that the facts/evidence establish the prima facie case, not examiner argument. Now, applicant’s arguments and statements after the fact might be relevant for estoppel reasons, but there’s a separate part of the rule to deal with that.

      1. By definition I’m right, as the office wouldn’t be able to reject anything without a document establishing prima facie unpatentability. If you want a more obvious a continuation, wherein the parent issues, and the CAFC finds invalid, and the child contains a similar or the exact claim, are you going to argue the CAFC decision doesn’t fit the bill?

        “I think that the facts/evidence establish the prima facie case, not examiner argument.”

        Things like argument and reasoning also establish it. You can’t establish prima facie obviousness without a motivation to combine. Even beyond that, it’s pointing to publications and showing how they meet the limitations…

  6. if your client sends you a letter commenting on the relevancy of prior art, do you cite that letter to the Patent Office?

  7. 1. No. Gee that was easy. But the hypo is a bit unrealistic, isn’t it? How does he know she has material info without having the material info available to him? Bare allegation from her?

    2. Wrong question. Question is not whether he has a duty, but whether he has a brain. Always disclose under these circumstances. Always.

  8. With respect to the question of whether an “explanation” included with prior art would need to be disclosed to the office, the answer is: it depends.

    LB explains why downthread:

    37 CFR 1.56 defines the information that is material to patentability as including information that “established, by itself or in combination with other information, a prima facie case of unpatentability of a claim.” ….

    37 CFR 1.56 also refers to information that “refutes, or is inconsistent with, a position the application takes in: (i) opposing an argument of unpatentability relied on by the Office, or asserting an argument of patentability.”

    Let’s say you become aware of three references, A, B & C, by virtue of a registered letter with an accompanying explanation. Each reference is 200 pages long, dense with text. The accompanying explanation shows the single page and paragraph number in reference A where your claimed “invention” is disclosed. Reference A, however, uses different jargon than your claims (hardly unusual). The explanation, however, also shows the single sentences (one each) in B and C (written by the same author who wrote A) where those terms are defined in such a way that no reasonable defensible distinction can be made between your claims and the disclosure of Reference A.

    Rest assured that the person who sent you the information by registered mail has kept a copy of the letter that was sent.

    How on earth can you justify merely submitting the three references without the accompanying explanation? When the inequitable conduct charges are brought against you and the fact that you received the letter and submitted the references is acknowledged, what is your excuse for not disclosing the information? Certainly in this situation the explanation is material to patentability and must be disclosed unless you want to face a near certain risk of unenforceability.

    A similar situation would apply should you receive post-filing evidence that your claimed invention has no utility. That’s certainly no less material than post-filing evidence showing that opposite. It must be disclosed, unless you want to risk a finding of unenforceability.

    Can anyone article a compelling reason why we’d want to create a rule that allows applicants to hide such information from the PTO or the courts? It would be wise to consider the paramount interest of the public when answering the question, rather than the applicant’s deep and intense desire to have a patent that it can call its very own.

    1. I love the fact that you reference Leopold’s explanation of “do what you want with it” as somehow the same as “it depends,” when clearly they do not mean the same thing at all.

      Quite in fact, my taking Leopold to task for the related foreign office action is very much like the “it depends” you describe.

      LOL – you should be criticizing Leopold and praising me on this facet.

      1. I love the fact that you reference Leopold’s explanation of “do what you want with it” as somehow the same as “it depends,” when clearly they do not mean the same thing at all.

        He didn’t say they were the same, TB, he was disagreeing with me while explaining why in plain English. I think he makes good points, regarding a difficult question.

        Quite in fact, my taking Leopold to task for the related foreign office action is very much like the “it depends” you describe. LOL – you should be criticizing Leopold and praising me on this facet.

        You want to be praised for writing gibberish, TB? Kindergarten is over.

        1. he was disagreeing with me

          Actual words of Malcolm: “ the answer is: it depends. LB explains why downthread

          Exactly where is the intimation of ‘disagreement’? Malcolm is positively referencing your post as an explanation. There is no “dis” of anything in Malcolm’s words.

          LOL – you accuse me of writing gibberish and when I draw an actual distinction – my post at 12.1 – at the same time that you write to attempt to denigrate that distinction and accuse me of that which you are doing.

          Oh, how very Malcolm of you (and that’s not a good thing).

        2. TB, he was disagreeing with me while explaining why in plain English.

          Indeed. And I did so nicely, acknowledging that LB provided the relevant rules.

          1. Nice tight circle you got there Malcolm.

            Indeed, perhaps with your “English as a first language proficiency,” you would like to point out the words you used that indicate your (oh so profound) disagreement with Leopold.

            Then compare that to my post at 12.1 which much more clearly delineates the distinctions.

            Clean up when you and Leopold are done.

            Thanks

  9. 1. If Joe knows that Matilda has information that is material than he knows what it is. He has a duty not to file claims or to continue the prosecution of claims that would be unpatentable over the material that Matilda possesses. In addition to this, I would summarize what I believe that information that Matilda possesses, and identify Matilda in an IDS.

    2. Package of prior art. I would not read it. I would take the package prior art and turn it over to the OED with a complaint that the person who sent the letter is intentionally trying to avoid the statutory requirements of how to submit information to the patent office, and request a formal investigation.

    1. How on earth would the sender be subject to OED sanction for sending the package of prior art to Joe? There is no requirement that the competitor can only communicate to the owner of published patent application via the USPTO. Think 1st Amendment, if nothing else.

      1. What Ned references is the requirement – in fact binding on third parties – for the process of submitting art to the record in a patent case.

        1. Perhaps so. But in the hypothetical, the competitor is not submitting it in a patent case. He is just sending a private letter to Joe. So how does the OED get involved in that?

          1. pikku,

            I invite you too to review the ethical rules. My post at 11.1.1.1.1, and the fact that the letter is indeed related to a patent case matter clearly establishes the OED’s involvement.

            1. Which ethical rule applies here? If 11.404(a), that rule prohibits means that have no substantial purpose other than to “embarrass, delay, or burden” the other party. I’m saying there are other legitimate purposes beyond those — while you seem to be assuming that the only purpose is to make the art of record. If that’s the case, then that’s why we disagree. Ditto for Ned.

              Second, what if the sender is not an attorney or agent (and one was not involved in the sending)? How is OED involved then?

            2. pikku,

              Read post 1.2.2.2. Read post 11.2.1.1.2.

              Also note that the direct choice to not follow rules – knowing full well the rules exist – is a direct ethical violation of that particular rule.

              To your “only” comment, it simply does not matter if there are other considerations – the controlling fact in any reasonableness examination will be the fact that making the item of record does exist. The hypo here explicitly contains that fact and thus controls – no matter what else motivations may exist that you want to throw in. You simply cannot avoid the truth in what I have posted.

            3. pikku,

              Your second comment “Second, what if the sender is not an attorney or agent (and one was not involved in the sending)? How is OED involved then?” is interesting but rather mundane.

              The links I provided already address this. OED states exactly who is covered by their ‘jurisdiction.’

              I would add a comment that any ‘hint’ that a client simply take matters into their own hands to avoid an otherwise ethical duty of counsel is just as slimy, and might incur a violation of 37 CFR § 11.505 – Unauthorized Practice of Law (assisting others)

              –“A practitioner shall not practice law in a jurisdiction in violation of the regulation of the legal profession in that jurisdiction, or assist another in doing so.” as noted in the OED slide deck at slide 16.

              The whole point from the start of this hypo was the slimy nature of trying to get around controlling rules that are known to be in place. The ends do not justify the means. It is as simple as that.

            4. anon, the competitor is not submitting the art to the PTO. The statute and rules pertaining to submissions to the PTO don’t pertain to communications between individuals.

              P.S. Non-attorneys acting on their own behalf aren’t engaged in the unauthorized practice of law, by definition.

              P.P.S. We’re in different universes, and talking past each other. I guess we’ll just have to leave it at that. I’m sure you’ll want the last word, so go ahead from here without me.

            5. pikku, your “pertaining to submissions to the PTO don’t pertain to communications between individuals
              is simply not quite true.

              Read again the broad scope of the OED and how it touches on matters that may come before the agency.

              The fact of the matter is that we are discussing patents, patent law and matters that may in fact come before the agency.

              There is no escaping this.

              Clearly, any communication of non-patent matter is not only trivial to our conversation, but to the very point of the thread.

            6. pikku,

              Yes I will take the last word: if you are intent to talk about a situation that does not involve the law and does not involve lawyers and only involves an individual not acting in a legal capacity, then your audience is far smaller – and far different – than what this thread is geared towards.

              But if you want to actually engage in a conversation that will be meaningful to the law and to attorneys practicing the law, by all means join me.

              Peace friend.

    2. Package of prior art. I would not read it. I would take the package prior art and turn it over to the OED with a complaint

      This does nothing with respect to your duty to disclose the information. On the other hand, if the person who mailed the letter to you wants to play your game, they could just as easily send your complaint to your state bar as an example of your legal incompetence and attempt to harass an attorney who is doing nothing unethical or illegal. I’m not saying that’s a winner. But I am saying it’s got a far better shot than your “complaint.”

      intentionally trying to avoid the statutory requirements

      The statutes don’t require third parties to report prior art to the USPTO.

      1. The statutes don’t require third parties to report prior art to the USPTO.

        Typical Malcolm spin and half-truth.

        Nothing requires a third party to try to make any prior art of record in a patent case.

        But – and this is critical – if such a party DOES attempt to do so, then there are statutory limits on how this is to be done.

        1. Nutcase: if such a party DOES attempt to do so, then there are statutory limits on how this is to be done.

          There are no statutes which prohibit anyone from communicating information to an applicant that is relevant to the patentability of the applicant’s claim. And do you know what? There will never, ever be such a statute. What on earth is the policy that could possibly justify such a statute? Please share that with everyone.

          spin and half-truth.

          There’s no spin or half-truth in my comment. You’re a lying sociopath who needs medical attention.

          Are you going to start talking about your mailroom staff and how they screen registered letters to attorneys and throw them away if they refer to prior art? Go ahead, nutcase. Make my day.

          1. There are no statutes which prohibit anyone from communicating information to an applicant that is relevant to the patentability of the applicant’s claim

            Nice spin – check the fact though that I said there are regulations as to the process. Did I say that there was a straight prohibition? Um, that would be No.

            Again the Malcolm half-truth and spin machine in gear….

          2. Malcolm’s self-Fail: “There are no statutes which prohibit anyone from communicating information to an applicant that is relevant to the patentability of the applicant’s claim. And do you know what? There will never, ever be such a statute….
            There’s no spin or half-truth in my comment. You’re a lying sociopath who needs medical attention.

            (Pointing to the scoreboard): 37 CFR 1.99
            link to mpep.uspto.gov

            Or perhaps Malcolm is spinning with a focus on statute versus rule….in which case he should reference 35 U.S.C. 122(e)

            Comments by Leopold attempting to cheerlead this can be pounded at any convenient table.

            1. (Pointing to the scoreboard): 37 CFR 1.99
              link to mpep.uspto.gov

              Alright, Mr. Intellectual Honesty, where is the part in 37 CFR 1.99 that prohibits someone from communicating information to an applicant that is relevant to the patentability of the applicant’s claim? Please reference actual words in the rule, and explain your answer using complete sentences.

            2. prohibits someone from communicating information

              LOL – more of the spin and half-truths….

              Leopold, take note of my post at 11.2.1.1.1. This is not a matter of prohibition – it is a matter of following the rules.

              You continue to try to support Malcolm at the damaging of your own legitimacy. Clearly, you attempt to be obtuse to the underlying ethics of the issue at hand.

              Wake up son.

            3. Curious as to what objective standard Malcolm’s post of 6:54 pm meets.

              There is nothing there but a vapid insult, proven completely wrong by my providing both rule and law that shows that he is simply wrong.

              Malcolm, why don’t you try (just try) to be on point?

            4. Curious as to what objective standard Malcolm’s post of 6:54 pm meets.

              It meets the standard of a non-controversial proposition based on the evidence that you consistently shove in everyone’s face. But you’ve been told this already, hundreds of times.

            5. Malcolm again self-FAILS with “ non-controversial proposition based on the evidence that you consistently shove in everyone’s face

              LOL -which non-controversial proposition would that be Malcolm?

              The point to this thread that I have refuted your outright 1ie with controlling law and rules?

              The global point that your still believe that intellectual honesty is not required because this is just a blog and not a court – that same stance that wrecks all credibility of any of your posts?

              Speak up man. I cannot hear you as you run away.

      2. Make my day, Malcolm.

        I might even go further and turn the attempted collusion by a competitor over to the FTC or the justice department. Doing this is borderline criminal in my book.

        Moreover, turning it over to the OED is turning it over to the PTO. They can review the material and decide what to do with it better than the applicant. But since it was submitted in violation of the statutes and rules, what and how to handle the material is up to the PTO.

        1. I might even go further and turn the attempted collusion by a competitor over to the FTC or the justice department. Doing this is borderline criminal in my book.

          What? Who’s colluding with who?

        2. turn the attempted collusion by a competitor over to the FTC or the justice department. Doing this is borderline criminal in my book.

          Collusion? What are you talking about?

    3. I would assume if the person is not before the office the OED has no jurisdiction over them. That said, I think turning it over without opening it would dispose of the issue.

      I do like the idea of crowdsourcing prior art rejections though. I suspect that the rules against submitting prior art is more to protect the office than the applicant, as there is no constitutional way to prevent them from shouting it from the rooftops anyway.

      1. Of particular note in the ethics rules is the behavior required of practitioners in dealings with those other than clients…

        Section 11.401 requires a practitioner to be truthful when dealing with others on a client’s behalf.

        Federal Register / Vol. 78, No. 64, page 20208 for those impaired.

        Those that engage in behavior knowingly below this standard (and those that cheerlead such behavior) because this is ‘just a blog’ need to take a serious look at the ethics of their behavior. Such ‘swagger’ has long been noted by certain people as unacceptable, and has been noted as the true source of the dregs and low quality posting on this blog, directly getting in the way of meaningful conversations.

  10. I have a follow up question I would love to get everyone’s feedback about. An application published whose claims were clearly anticipated by Jack’s patent. So Jack files a “poor man’s protest” and send the attorney for the application a letter explaining why the published claims were clearly anticipated by Jack’s patent with a clear claim chart. The attorney cites Jack’s patent in an IDS but nothing else, and the application issues with the same claims that are clearly invalid under 102.

    Has this attorney committed an ethical breach by allowing claims to issue he knew were invalid? Would this law firm have any liability to pay for the costs of a reexam?

    1. Joepatent,

      If I read you hypo correctly, the attorney has fulfilled his duty by informing the Office.

      Unless you have a verbatim word for word match with the claims, the duty of the attorney is to his client and to persevere for rights for the client. The attorney is not an examiner is not the party whom should be making a rejection.

      That being said, you do raise an interesting question as to the oath – but that would be the oath of the inventor (not his attorney) in that the inventor must swear that the inventor believes that he is the true inventor. Since in your hypo, the attorney did present the reference to the Office, I will assume that the attorney also presented such a close item to his client and advised the client as to the client’s responsibility with the oath.

      Lacking a verbatim word for word match, then, it would fall to the client as to the client deciding to proceed.

      Of course, an attorney faced with a crystal clear case of an applicant violating his oath can choose to fire the client.

      1. I’d disagree with you just a bit, anon. I think the test is a bit more stringent than whether there is a “verbatim word for word match with the claims” — I’d instead say that the attorney filing a set of claims must subjectively have a good faith reason that they are novel over the prior art, under his duty of good faith to the Office.

        Having said that, I don’t think that there is an affirmative duty to amend claims already on file, in light of a newly discovered anticipating reference. It might be a good idea to do that, but that is a client/attorney call. There is not a duty to make the Examiner’s rejection for him.

        1. Thanks pikku – we are largely on the same page as the hypo set forth by Joe cannot really take into account an attorney receiving something prior to the first set of claims being drafted (it is given that the application has been published).

          1. You’re welcome.

            A more interesting question arises if Joe cites the anticipating reference, but the Examiner doesn’t apply it and allows the case. Does Joe have a duty to amend the claims, before paying the issue fee, if he subjectively believes that the claims are anticipated?

            I would answer that he does. He has a duty to the Office to not let a patent issue in bad faith. But that is a closer call — one can’t read the Examiner’s mind regarding how he might have interpreted the claim to find it allowable (assuming that the anticipating reference was considered that closely at all, which is a big assumption).

  11. 2. One distinction, I think the consensus from the comments above is that the Joe MUST submit to the PTO the information provided by the competitor. Joe does not HAVE to disclose it. In most situations, I think it would probably be wise to submit it to the patent office, but if there are good reasons not to submit it, then I wouldn’t. For example, if the references have already been cited and discussed at length in prosecution or if references have already been cited in prosecution that are clearly cumulative of the received references, then no probably no need to cite.

    As Dennis mentions in a comment above, the explanation received about the references will probably be most helpful to the examiner. Some commentors have said that you do not need to cite it because it is only opinions and/or because it is a document was created well after the filing date. I don’t think any of these reasons have merit.

    There have been court decisions finding inequitable conduct for not submitting documents with dates after the filing date,, such as Office Actions from related applications in the US or abroad (an opinion) or post filing data that contradict positions taken in an application or during prosecution.

    Regarding NWPA’s comment that Joe doesn’t have to read through the documents, this is a very risky strategy. Are you going to take the position that you don’t even open mail that looks like it is from an outside attorney or competitor. And once you have opened it, you have read something that now puts you on notice that someone considers the enclosed documents material.

    I seem to remember a case where an attorney came across some information that made it likely that another document he didn’t currently have, but could easily obtain, was likely material. He took the position that he had no duty or requirement to follow-up, but the courts disagreed and found the conduct to be inequitable. Again, the preliminary information he received made it strongly likely that the referenced document was material.

    1. For example, if the references have already been cited and discussed at length in prosecution or if references have already been cited in prosecution that are clearly cumulative of the received references, then no probably no need to cite.

      Those reasons are probably so trivial that nobody thought them worth mentioning. Still, it’s still easier, cheaper, and less risky to disclose everything than to make decisions about materiality.

      There have been court decisions finding inequitable conduct for not submitting documents with dates after the filing date,, such as Office Actions from related applications in the US or abroad (an opinion) or post filing data that contradict positions taken in an application or during prosecution.

      Sure, in unusual fact scenarios where the documents cast doubt on a factual assertion made by the applicant, or establish inherency, or something. But in general, if the document wasn’t available to the public before the filing date, it’s not relevant as prior art, and you have to find some other reason to create a duty of disclosure.

      Regarding NWPA’s comment that Joe doesn’t have to read through the documents, this is a very risky strategy. Are you going to take the position that you don’t even open mail that looks like it is from an outside attorney or competitor.

      Willful blindness is tantamount to knowledge. I’m surprised we needed the Supreme Court to tell us so, but they did.

    2. >>Regarding NWPA’s comment

      Again, what statute are you relying on? I don’t think just because someone mails me something that it is “highly like” that it is material. Are you suggesting that a competitor can have their attorney send me references and then I am supposed to bill my client for reading and assessing the references? I don’t think so. The fact that a competitor thinks they are relevant does not make it highly likely that they are material. And, it is certainly not willful blindness, but economy.

      I would not read them. I would pitch them in the trash. Now, it would be different if we were asking for a license and they responded with a well written explanation as to why they were relevant. But, just dumping references on me and expecting me to make the evaluation is unreasonable when we are not litigating. Who is supposed to pay for this work?

      1. Are you suggesting that a competitor can have their attorney send me references and then I am supposed to bill my client for reading and assessing the references? I don’t think so.

        Your duty to the Office is independent of whether you can get paid for complying with it.

            1. It’s a rather weak rebuttal, given that no duty exists prior to actually reading the material to see if a duty exists.

              You really need to step up your game, Leopold.

            2. It’s a rather weak rebuttal, given that no duty exists prior to actually reading the material to see if a duty exists.

              It was a rather weak argument to suggest that whether or not you’ll get paid has anything to do with the duty to disclosure.

              Now go away, TB.

  12. 2. Joe doesn’t have to read through the package to figure out if it is material or not. What statute would require Joe to do that?

  13. 1. He can’t know that it’s material to patentability if he doesn’t know what it is. If he does know, then he needs to procure copies of the art himself.

    2. Joe has to cite the references in an IDS. The explanations are just someone’s opinions, and he’s free to disagree. You have to cite things that are material to patentability, and outside, after the fact opinions are not.

        1. …when the patent issues…

          Is there to be an interesting correlation then between the treatment of property (i.e. ownership) and this notion that certain duties end at issuance? Several of the proffered rationales in the Executive Agency power grab of writing substantive law would be seemingly affected.

  14. 1. While he is under no obligation to search for information of which he is unaware, he should make his best effort to obtain Mathilda’s information and submit it to the Office. Even if he did provide us with her name, I don’t think we would be permitted to act on it. And even if we were, we can’t compel her to hand over the information any more than Joe could.

    2. He is absolutely required to submit the information (except for information that is clearly unrelated), although LB is right about not being required to submit the explanation.

  15. Information that identifies/locates material information is also, arguably, material information. In other words, it is information that, if the Examiner knew about it, the Examiner arguably would not have granted the patent.

    Notably, “material information” does not need to be sufficient, by itself, to render an application unpatentable. Rule 56 explicitly states “[i]t establishes, by itself or in combination with other information,” and I’m guessing that Therasense uses similar language.

    As for question 2, Joe has a duty to disclose the information if (A) he actually reads the information (instead of trashing the package unopened), and (B) the competitor’s arguments actually satisfy rule 56 and/or Therasense.

    1. Kip,

      You are wrong for the reasons I gave below.

      Identity of someone who may know something is in no way material. Either Joe knows or he does not know. If he knows, his duty is already covered apart from any identity of someone else.

      Your line of ‘reasoning’ would implicate all university research in any field of art, because everyone knows that some university somewhere is possibly working on a related and ‘material’ aspect.

      1. Anon, we need to distinguish between:

        1. X knows that person Y has information that is material
        2. X knows that university Z might be working on something that might be material

        You seem to be talking about 2. I’m talking about 1.

        1. How do you distinguish between the 2, Kip?

          Each contains the driving element of another entity suspected of having information.

          Read my reply in context with my other points (re: Joe’s actual knowledge or lack thereof).

  16. 2. Competitor sends Joe a package of prior art and an explanation of why the prior art renders Joe’s pending application unpatentable. What are joe’s disclosure duties here?

    Joe must disclose the package of prior art. He can do whatever he likes with the accompanying explanation.

      1. I’d argue that the explanation, unless created or published before the filing date, isn’t prior art or a timely reference. Same issue as providing post-critical date references that describe pre-critical date prior art systems.

      2. In a related matter, examiners often receive an IDS with art that was cited by a foreign office in a counterpart application, but the foreign office action is rarely attached.

        1. but the foreign office action is rarely attached

          That would be exceedingly poor practice. It is unfathomable to not provide it.

          The rule on IDS is very much still the more the merrier and drive up with your dump truck of references (carefully cataloged in some reasonable manner to avoid the charge of hiding a needle in a haystack, of course).

          1. “… dump truck of references (carefully cataloged in some reasonable manner to avoid the charge of hiding a needle in a haystack”

            I’m curious about this comment. I’ve been hearing comments like this for about 15 years.

            Does anyone know if an attorney has ever been found to have committed inequitable conduct specifically on this basis of hiding prior art needles by burying in a needlessly voluminous haystack?

            1. Folklore has it that such does happen – I was attempting to eliminate that chaff by proactively stating that the sizable IDS list has an objective structure.

            2. Folklore has it that such does happen – I was attempting to eliminate that chaff by proactively stating that the sizable IDS list has an objective structure.

              What? Folklore has it that what does happen? Mellow asked whether inequitable conduct has ever been found for certain behavior – are you saying that folklore has it that inequitable conduct has been in such circumstances or that the certain behavior does happen? What “chaff” are you trying to eliminate? And what the heck does “the sizable IDS list has an object structure” mean? Why can’t you communicate in plain English, like everyone else here?

            3. Leopold,

              You are really reaching hard for some small fingerhold with which to counter the points that I have raised on this thread.

              This scream of desparation does not bode well for you. Such furious dust-kicking is only too transparent to your avoidance of the ethics under discussion. Your lack of comment on the actual topic says more than any of the attempted diversions.

              You really do svck at this.

            4. Yeah, I didn’t think you could answer the questions.

              Such furious dust-kicking is only too transparent to your avoidance of the ethics under discussion.

              LOL. Such furious language-mangling is only too transparent to your avoidance of any sense.

          2. Leopold is (again ) wrong with “I didn’t think you could answer the questions.

            Just because I call you out for dust-kicking does not mean that I cannot answer your dust-kicking questions.

            You REALLY svck at this.

      3. LB – Can you explain this further. I ask b/c it is that explanation that will probably be most helpful to the examiner.

        As IANAE said in another sub-thread, a document created by a third party after the publication is not prior art. 37 CFR 1.56 defines the information that is material to patentability as including information that “established, by itself or in combination with other information, a prima facie case of unpatentability of a claim.” I don’t think that can be fairly read to include a third party’s opinion on prior art – I don’t see an examiner citing to a third party’s argument in a rejection. 37 CFR 1.56 also refers to information that “refutes, or is inconsistent with, a position the application takes in: (i) opposing an argument of unpatentability relied on by the Office, or asserting an argument of patentability.” I suppose it’s conceivable that the third party’s opinion could be considered to fall in one of these categories, but I again think that this section should be read as referring to actual evidence or statements made by the applicant.

        1. I don’t think that can be fairly read to include a third party’s opinion on prior art

          You would, of course, be thinking wrong.

          1. Ah, the red cape of “LB said…”

            Do you have any examples of when the Office or a court has read 37 CFR 1.56 (b)(2) to apply to a third party’s unsolicited opinion on the patentability of claims? I didn’t think so. Now go away, TB.

            1. LOL – you are misusing the rec cape analogy, Leopold, as it is you that charges at the red cape – blind as a bull.

              My response is not blind at all.

              And the immediate thread’s comments are not to just any third party – they are to a foreign office examiner’s views on legal topics. You have this because you have the references cited – try to keep up. You are only embarrassing yourself with your pathetic attempts to Tr011.

            2. And the immediate thread’s comments are not to just any third party – they are to a foreign office examiner’s views on legal topics.

              “You quite miss the point,” TB. The “immediate” discussion is my response to Dennis’s very specific question about “the explanation” that was provided by a competitor.

              Now go away, TB.

    1. How about sending the package as third party observations under Art. 115 EPC for Joe’s corresponding EP application (very cheap), and explicitly reminding him of his obligations to the USPTO in the accompanying letter (R. 114(1)), citing the better passages from MPEP 2001, e.g. : Applicants and other individuals, as set forth in 37 CFR 1.56, have a duty to bring to the attention of the Office any material prior art or other information cited or brought to their attention in any related foreign application.

      It will be there for the entire world to see in the EPO’s online register, with a date and proof of receipt.

  17. Off the top of my head:

    1. Joe cannot know whether Matilda’s information is material unless he himself knows the information. If he knows the information, and it is material, he must disclose it. If he does not know the information, he cannot know whether it is material, and there is nothing to disclose.

    2. Joe must disclose the information provided by the competitor to the extent that it is material and not already of record. He need not disclose the competitor’s rationale, except to the extent that the information is not in English, in which case Joe must summarize its relevance (which may or may not correspond to the competitor’s opinion of its relevance).

      1. My reading of Therasense is that it distinguishes the specific intent to deceive from negligence (even gross negligence). But it can be safely assumed that Joe has read the cover letter enough to understand that the competitor believes that the enclosed references invalidate the claims. In that case, I think it would be reckless (i.e., willful disregard) if he were to then not cite them (whether or not he read them). If the references are in fact material, the only inference that I could draw about Joe’s intent in not citing them is that he didn’t want the PTO to see the references — there is not an innocent counter-inference IMO.

        Strategically, it is also really risky business considering that the competitor is interested in Joe’s patent, and would be a likely opponent in litigation over it. If Joe threw away the letter (as some have suggested), the only other party who would know about it would be on the other side of the lawsuit.

        1. But it can be safely assumed that Joe has read the cover letter enough to understand that the competitor believes

          Even if this far one walks, what competitor believes is immaterial to the duty that the applicant and his representative have.

          I, as a competitor, believing that EVERYTHING is material simply does not make it so.

          Your view of reckless is without foundation.

          1. The courts imposed the duty. Equitable defense of inequitable conduct, as I noted above.

            My view of reckless is that Joe’s actions in not reading/citing the references are done with disregard of whether the references are material. That’s the foundation.

            And no, the references are not material merely because the competitor says so. The references are either material or they are not. But IMO the cover letter places a duty on Joe to evaluate the references for materiality. See my original answer in 3 “to the extent that it is material”. If the references are in fact not material, then the question is moot. But if the references are material and Joe does not cite them, then he is at risk.

            1. But IMO the cover letter places a duty on Joe to evaluate the references for materiality

              That’s the point without foundation.

              Can you provide a foundation for such a view?

            2. First, we know that letters from competitors can establish a duty in patent matters. Certainly a letter placing a party on notice of patent infringement establishes the duty on the recipient to act in a reasonable manner to investigate, etc., at the risk of willful infringement. The standard is the objective reasonable business man, IIRC.

              I see this situation to be similar. The recipient is similarly under a duty to act reasonably when receiving the notice from the competitor. To me, those reasonable actions include citing the references or investigating them to determine that they are not material.

              There is no absolute obligation on the part of the recipient to do anything — that is true. The duty only arises if the recipient seeks to obtain a patent.

            3. I see this situation to be similar
              Again – you are assuming the point to be proven.

              This situation is expressly NOT similar. The objective test is failed because the intent here is to trick the applicant to submit art and there already is a process for such for any third party.

              What appears reasonable to you is simply not enough to overcome this objective procedure, as Congress has spoken to this procedure.

              Your last sentence is off, as the hypo requires a patent to be in process – and is what is covered by the requirements set forth by Congress.

              Unless you can come up with something better, your “reasonable” view is precisely not reasonable.

        2. pikku,

          What I would do would be to stop reading the letter once I figured out what it was, then turn it over to the OED and state that I had not read the letter or its contents, and they could do what they wanted with it, but with a suggestion that they investigate the author for willfully attempting an end run around the statutes and rules about submitting information to the office.

          The information should be made public, but there is a way to do that and that way requires fees, a timely submittal so as not to disrupt prosecution, and any such letter directed to the patent applicant not in compliance with the rules or with the statutes is unethical in the extreme, in my view.

          1. Ned, we are in agreement on the ethics of this situation. But contrast that with Leopold and Malcolm. While Malcolm has been quiet on this particular thread, his views are well known.

            That a person who professes that intellectual honesty is not necessary on a blog – because a blog is not a court – has such a tainted view of another ethical matter really should surprise no one. That Leopold cheerleads such, really should surprise no one.

          2. I’m not trying to be argumentative, Ned, but I’m just trying to understand how the competitor is under any obligation to not communicate with Joe (esp. since anon is taking me to such task for establishing the foundation for the duty to cite the art). My comment on the 1st amendment is not frivolous — the government cannot regulate what one says in a letter to someone else, much less whether they can send such a letter. Perhaps they do want to avoid the fees by not wanting to involve themselves in the prosecution — that is their prerogative.

            If the reason you/Joe are turning it over to the OED is to absolve yourself of the duty to cite it in the case, at least the OED has jurisdiction over your behavior since you are seeking the patent. But they have none over the competitor who sent the letter. The rules on submission are permissive (“may”) not mandatory.

            Nor do I see how this is an ethical problem on the part of the competitor. How so?

            1. The rules on submission are permissive (“may”) not mandatory.

              You make the same mistake Malcolm does above (I will give you the benefit of the doubt that you are not purposefully making this mistake).

              The permissive nature is what you should keep your eye on. It is permissive whether or not a third party tries to make prior art of record. But once a third party takes that step and attempts to make art of record, the permissive nature is gone. If you decide to take the action, then you are not free to try to avoid the regulations governing how that action is to be taken, once it is decided to take the action. The rules are not permissive throughout.

            2. I think I see the basis for our disagreement. I agree that once the third party tries to make prior art of record, then that party must follow the rules.

              But in this case, the third party is not trying to make the prior art of record. I see it simply as a competitive tactic (say, if perhaps, they are about to introduce a competitive product, then they are telling Joe that they stand ready to defend on that basis). They are free to do this, IMO.

              Actually, I think it is foolish of the competitor to do this. Better to either go full throttle and keep the patent from issuing, or lay behind the log and not allow Joe to get troublesome claims and the art considered and of record. But nothing says to me that they can’t send the letter.

            3. We also disagree on this basic premise: “But in this case, the third party is not trying to make the prior art of record

              My arguments require this to be true.

          3. pikku, “The third party is not trying to make the prior art of record. I see it simply as a competitive tactic (say, if perhaps, they are about to introduce a competitive product, then they are telling Joe that they stand ready to defend on that basis). ”

            For the love of god, man, don’t you see why this is unethical? Your client is attempting to gain competitive advantage by not revealing the information to the public in the first place, and hoping that he or she can gain an upper hand in any future negotiation for a license or for that matter, immunity from being sued, that is not enjoyed by the public. This is precisely the kind of inequitable conduct condemned by the Supreme Court in its original cases on point. It is the competitor who sends this kind of information to the patent applicant, and not to the PTO, who is unethical, and perhaps committing an antitrust violation to boot.

            1. <. . . our client is attempting to gain competitive advantage by not revealing the information to the public in the first place, and hoping that he or she can gain an upper hand in any future negotiation for a license or for that matter, immunity from being sued, that is not enjoyed by the public.

              Sorry, I don’t think so.

              It’s prior art, Ned. It’s already public*, whether by existing patents, publications, or products sold. Others can gather the same information if they want to — nothing is being held back from the public. And others can enjoy that same upper hand if they want to do the same work in finding and analyzing the prior art — or the competitor can invalidate the patent if later sued.

              * I’ll grant that there may be an issue if the competitor is telling Joe information that is not available to the public, for example the internal workings of their own products that are not otherwise apparent, for reasons of ill intent (conspiring to get a patent deal so that a third competitor is frozen out). But in that instance, I’m not sure that Joe has a duty to submit the information, as neither he nor the Office can verify it as true. And absent the ill intent (e.g., if the competitor is simply telling Joe to be wary about asserting any patent he gets), I see no fraud on the public — competitor is under no obligation to publicly disclose the inner details of his product. Secondly, Joe is certainly under no obligation not to disclose what competitor told him — the competitor just let the cat out of the bag. Indeed, failing to do so could show that he is in on the conspiracy to freeze out the third guy (if there is one).

        3. Nutcase: the intent here is to trick the applicant to submit art

          What in heck are you talking about? There’s no “trick”.

          If Jay Dicholas has a pending application and some crap claims pending and I comment here (correctly) that Reference A and B renders Dicholas’s junk patents obvious, then Dicholas has several choices: (1) amend the claims to avoid A and B; or (2) disclose A and B and my explanation and a pathetic attempt to controvert my explanation that might persuade an incompetent examiner; or (3) continue on and risk inequitable conduct.

          There’s no “trick” here.

          And this is exactly as it should be. Why would anyone believe otherwise? What possible policy reason is there for allowing applicants to ignore material facts that tank their pending claims and then enforce the invalid patents that grant in the absence of those facts?

          1. Nice smoke and mirrors Malcolm – now return to the subject of an attempt to introduce art into the record but not following the rules for doing so.

  18. To answer the first question, a little more information would be helpful:

    What is the basis of Joe’s ‘knowing’ that Mathilda’s information is in fact material?

    If it is anything concrete, then the ‘problem’ disappears as Joe likely is already under the duty to supply this concrete underpinning that is in his possession. If there is nothing concrete in his possession, then again, problem solved, as there is nothing that Joe has in his possession to deliver to the Office.

    As to disclosing the identity itself – one wonders what ‘identity’ has to do with the invention directly (as the requirement is for information as to the invention and not anything that would support an independent investigation).

    …or is this another of those “it would be convenient but otherwise not associated with any actual law’ trick questions…?

  19. LOL

    Does the competitor falsely attribute the identity of the sender to be a third party attorney?

    What are the ethical implications for that third party attorney? For the sender who engages in the falsehood?

    1. Does the competitor falsely attribute the identity of the sender to be a third party attorney? What are the ethical implications for that third party attorney?

      That doesn’t make any sense. If the competitor falsely claims that the sender is a third party attorney, then there is no third party attorney, and there are no relevant professional ethics obligations.

      Or did you mean to say something entirely different, as usual?

      1. MellowMarsher, anon’s inability to string two coherent sentences together is an open joke, as is his propensity to make cryptic allusions to statements that he may or may not have made or be making. This latter strategy allows him to deny everything and to argue with everything you say.

        Go ahead, ask him to explain more clearly the scenario he has in mind when he refers to the competitor “falsely attribut[ing] the identity of the sender to be a third party attorney.” He can’t do it.

        While you’re at it, you should also ask him about the process that his “counsel” follows for handling registered mail from other law firms. Now that’s a barrel of laughs.

        1. Leopold errs grossly with “anon’s inability to string two coherent sentences together is an open joke

          Coming from one who repeatedly has apologized for getting the law wrong – and my getting it right – this little of Malcolm Mooneyism is completely false.

          Care to share those references on ladders of abstraction yet Leopold? How about the Professor’s FRCP letter? Or discuss the Myriad case? the Bowman case? whether Malcolm uses innuendo? or any other of a number of other topics where you have been flat out wrong?

          Try not to be such a putz.

            1. What is hilarious is that (once again) you miss the forest for the trees, focusing on form to the complete exclusion of content.

              Seriously Leopold, can you be more obtuse? Your alignment with Malcolm seriously damages your own credibility.

              Wake up.

            2. What is hilarious is that (once again) you miss the forest for the trees, focusing on form to the complete exclusion of content.

              Dude, when the “form” violates every standard of communication, it’s kind of difficult to convey any “content.” I congratulate you on successfully forming a coherent sentence here, though.

            3. Dude, when the “form” violates every standard of communication

              Completely false.

              It is common knowledge that blogs do not proscribe to all rules of grammar, and that using a period after every word does not indicate full sentences but rather serves as a method of adding emphasis.

              Put the shovel down Leopold. You are only making yourself look more the putz than usual.

            4. It is common knowledge that blogs do not proscribe to all rules of grammar…

              LOL. It keeps getting better and better.

              Nobody is asking for perfect grammar. But at least minimal adherence to the most basic rules of syntax would be useful.

            5. LOL – “But at least minimal adherence to the most basic rules of syntax would be useful.

              Asked for and given – note the comment about this being a blog and the explanation given to the point of emphasis meaning of using periods after every word.

              You really really svck at this Leopold.

            6. Asked for and given – note the comment about this being a blog and the explanation given to the point of emphasis meaning of using periods after every word.

              LOL. Another unparsable “sentence.” You slay me.

            7. Asked for and given – note the comment about this being a blog and the explanation given to the point of emphasis meaning of using periods after every word.

              Word salad.

              Try night school, TB. In addition to learning the English language, it’ll keep you off the streets and give your nurses a chance to relax.

        2. I am sure if Leopold tried, he would remember that the original story line for this hypothetical was a post by an attorney who boasted that he knowingly avoided the rules (and expenses) that controlled third party art submissions in a patent case by sending said art to an opponent patent applicant by way of an unrelated third party law firm – one that would not be recognized by the attorney for the patent applicant as having anything to do with the real parties in question – ‘using’ a friend’s law firm address in another city.

          This slimy maneuver was immediately lambasted by your truly – and just as immediately supported by the “high” ethically minded Malcolm, who saw nothing at all wrong with the subterfuge (and yet clamors for more data on other situations involving real parties of interest).

          Btw, love the attempted propping up of Malcolm with this thread. Between Ned’s superman vision goggles of points ‘brought up’ by Malcolm (but not), Leopold’s constant cheerleading (and denial of same), and the line of thought only partially resurrected (omitting the ethical considerations part of the initial discussion), the repeated attempts to salvage something of worth of Malcolm is pretty pathetic.

          And such efforts only highlight a critical flaw in the ‘character’ that is Malcolm: his dependence on a clear disassociation between the actual facts and laws and his proposed policies.

          The lack of intellectual honesty is a fatal flaw. You simply CANNOT put forth viable positions of any policy on a foundation of duplicity and empty rhetoric and expect that ‘policy’ to stand up to scrutiny. The ends never justify the means.

          It really is that simple.

          1. You really need to get your meds adjusted, man. This is going to be difficult year for you.

            You simply CANNOT put forth viable positions of any policy on a foundation of duplicity and empty rhetoric

            The policy is that communicating information to applicants that is relevant to the patentability of the applicants proposed claims is something that should be encouraged, not discouraged, because it enables applicants to amend their claims and avoid the granting of an invalid patent (an event that the justifiably abhors).

            There’s no “duplicity” or “empty rhetoric” there. So take your little referee whistle, stick it where the sun doesn’t shine, and invite all your li’l friends at IP Suckdog to blow on it.

            1. Malcolm, if you want to change the law, contact your Congressman.

              If you want to just be yourself and wield vacuous insults and remain disassociated from reality, well, continue as you ‘normally’ do.

            2. Malcolm (again) wraps an usurpation of existing law in his pound the policy table with “The policy is…

              The duplicity and empty rhetoric from you Malcolm is the FACT that I have given you both law and rule that dictates how the process is to be followed and you refuse to see the unethical behavior of someone not following the law and the rules because of your “the ends justify the means” mindset.

              It is quite simple: the ends do not justify the means. They never have.

              Clearly, your rant is simply wrong. Your responses to my on point listings of the law and rules – including the ethical rules is mindless ad hominem attacks ignoring the substance of what I post.

              Oh so very typical of you.

              And just as typical, you are left holding the short end of the stick.

            3. the ends do not justify the means

              A stitch in time saves nine. Every dog has its day. The early bird gets the worm. You’re a m0r0n.

              Fun game! You’ll start the next round as usual?

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