What Different Types of Art Must be Cited to the USPTO?
In the prior post, Validity and the Duty of Candor, I cautioned inventors to catalog all relevant art documents for submission on an information disclosure statement.
What are the types of information that need to be cataloged? Anything and everything.
From the perspective of an Information Disclosure Statement filing, there three main types of “art”:
Foreign Patents and Publications. These are foreign patents and publications from other patent offices around the world.
Non-Patent Literature. These are all other types of documents including:
Videos including YouTube Videos.
Wayback Machine PDF Printouts.
See also, e.g., Patent Owner’s Challenge to Wayback Machine Evidence Fails (discussing use of Wayback machine in post-grant review); and [Way]Back to the Future: Using the Wayback Machine in Patent Litigation (discussing use of Wayback machine in patent litigation).
Any other documents.
Summary or Translation of Foreign Language Material. To the extent foreign patents and publications or non-patent literature is in a different language, there needs to be a concise explanation or a full translation of the information. See MPEP 609.04(a)(III).
For inventors and patent owners actively prosecuting (or preparing to pursue) patents, it is essential to collect this type of information and cite it to the Patent Office. The easiest way to do this is to keep track of art during research of your invention. Make sure to provide this to your attorney and submit timely information disclosure statements as you obtain additional information. Also, if you are a researcher or prolific inventor, do not forget to cite your prior publications in journals or patent documents.
If the patent application issues over the cited art, it is less likely the documents can successfully be used to invalidate that patent later. However, if highly relevant literature is not cited during prosecution, there could be an argument that the resulting patent portfolio is invalid for failure to comply with the duty of candor.
In the next post, I will discuss one tool that is used to organize and track art citations across a patent portfolio.