New Article “Avoiding Responsibility: The Case for Amending the Duty to Disclose Prior Art in Patent Law”

By David Hricik, Mercer Law School

The student comment, by John O. Curry, appears at 95 Wash. L. Rev. 1031 and is available here. The abstract states:

Federal regulation requires patent applicants in the United States to disclose to the United States Patent and Trademark Office (USPTO) a wide range of references that might be material to their invention’s patentability. Applicant disclosure of prior art currently plays a large role in the prosecution and litigation of patents. The effects are quite deleterious, resulting in the filing of unnecessary references that go unreviewed in the USPTO and providing plausible grounds for the assertion of inequitable conduct defenses in patent infringement actions. This Comment looks at the history of the laws that evolved into the codified duty to disclose prior art and finds that the historical rationales no longer justify such an imposition. It also examines several foreign jurisdictions that differ from the United States in their mandates to disclose prior art, ultimately recommending the adoption of the standard used by the European Patent Office as a way to resolve both the administrative and legal challenges posed by the current standard.


About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

5 thoughts on “New Article “Avoiding Responsibility: The Case for Amending the Duty to Disclose Prior Art in Patent Law”

  1. 3

    Shame. I wrote a long comment but it has not appeared. Hey Ho.

  2. 2

    I see that the way the EPO does it is held up by the Curry Article as a possible way forward. But let’s get it right. Article 124 EPC uses the form “may require” rather than “shall require” (and I’ve not yet been asked by any EPO Examining Division to produce any prior art).

    Admittedly, Rule 141 of the Implementing Regulations uses the form “shall require” but only of the priority application at the start of the Paris Convention year. Usually, there is no PTO search report.

    What’s not to like, with the UK approach? In the UK, there is no compulsion to disclose, but every reason for Applicant to take into account ALL known prior art before going to grant because, after grant, permission to amend is discretionary, which discretion might be withheld if the party asserting the patent knew of prejudicial art but failed to disclose it in the context of the litigation. And if you can’t amend, your asserted patent crashes out as invalid.

    And even if you have permission to amend, finding an amendment that meets all requirements of the EPC is formidably difficult (because your amendment must satisfy the requirements of Art 84 EPC (clarity).

    I continue to think that the biggest impediments in the USA to the arrival of a fair balance of forces between those asserting patent rights and those accused of infringing are i) the “finger on the scales of justice” given by the (unique to the USA) skewed C+C presumption of validity and ii) deference to the decisions made in ex Parte prosecution prior to issue by a single PTO Examiner. Examiners are only human. With the best will in the world, in ex Parte dialogue, they often get it WRONG. The EPO, of course, uses a 3-member Examining Division for all pre-issue examination proceedings.

    1. 2.1

      I continue to think that the biggest impediments… i)

      You have every right to continue to think like that and be wrong.

  3. 1

    Enjoyed the article, as it showed an incredible effort at corralling sources.

    However, a (somewhat minor) nit, is that the author clearly does not recognize the veracity of the level of the sources obtained, and tends to treat even opinion sources as if they had the force of law.

    This makes for an overall unsatisfying piece, and renders the opinions of the author suspect.

    Rather than a piece of advocacy, the piece would have been better approached with an attempt at taking an objective view of the history behind the current state of law.

    I blame this on academia, who by and large have lost the perspective (and the critical thinking involved with) any such difference between objectivity and advocacy. This student has — unfortunately — learned some of the wrong lessons.

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