Validity and the Duty of Candor
As discussed in my prior post, What do Contingent Fee Patent Lawyers Look for When Considering Validity During Due Diligence?, patent lawyers must analyze compliance with the duty of candor under 37 CFR 1.56 when considering a case on a contingent fee basis.
To the extent that someone specified by 37 CFR 1.56 is required to cite art, but does not in violation of the duty of candor, then it may be a basis to invalidate the entire patent portfolio due to “fraud on the patent office.” Thus, it is crucial to make sure that information disclosure statements are of record citing all relevant art.
So who is required to cite information, and what is material to patentability? The Federal Regulation merely gives the following guidance:
Who is required to cite art under 37 CFR 1.56?
"Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section."
When does the duty to disclose exist?
"The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned."
What is 'material to patentability'?
"The Office encourages applicants to carefully examine:
(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability."
If something is not 'material to patentability' do I need to submit it?
"There is no duty to submit information which is not material to the patentability of any existing claim."
While the USPTO gives some guidelines, there is no clear cut definition as to what is "material to patentability." If, as a patent owner or inventor, you have a reference that is around the time of your invention and is arguably relevant in any way to a claim or something you would like to claim in the future, err on the side of caution and submit the art on an information disclosure statement. If you do not disclose a reference that is in your files that found during litigation discovery, a defendant will likely try to make an argument that it was the most relevant piece of art. They will do this in an attempt to invalidate all of your patents in one fell swoop by arguing that you knowingly and in bad faith withheld the art from the Patent Office. If you do disclose it, and your patents issue over it, your portfolio is a little bit stronger.
As inventors research and collect information during the inventive process, make sure all relevant art documents are cataloged so that it all known references are submitted on an information disclosure statement. Comprehensive art citations will not only establish the state of the art at the time of the invention, but it will make sure that the resulting patents issue in view of the art and will not be susceptible to attacks under 37 CFR 1.56.