By: Mark R. Malek
I recently posted a couple of articles directed to the duty to disclose prior art to the Patent Office during the prosecution process of your patent application. The articles can be found here and here. As we know from these past two articles, the duty of disclosure is vital in the patent application process, and the duty to supplement that disclosure is even more vital. Simply because new prior art has come to light after the Applicant has already made an initial disclosure to the PTO does not relieve the Applicant from supplementing the disclosure with the newly discovered prior art.
There is a particular case that arises when an Applicant may have more than one patent application pending. Sometimes, different Examiners may examine multiple related applications. Of course, each Examiner may have a different search strategy and may uncover different prior art. The examination of a patent application must be kept completely confidential. Confidentiality of patent applications is generally outlined in 35 U.S.C. 122. It is not as though an Examiner on one case will seek out the Examiner of a related case to go over the prior art that they have uncovered and compare notes.
The scenario that we are dealing with here can be laid out with an example. Suppose Application #1 being examined by Examiner #1 has claims directed to elements A, B, C, D & E, and that Application #2 being examined by Examiner #2 has claims directed to elements A, B, C, F & G. Now suppose that Examiner #1 issues a notice of allowance and indicates that no prior art reference was found that disclosed element C. Now also suppose that around the same time, Examiner #2 issues a rejection of Application #2 and provides a prior art references that discloses element C.
Anyone see the issue yet? The Applicant now knows of prior art that would cause Examiner #1 to issue a rejection of the invention set forth in Application #1. If the Applicant does not disclose the prior art that Examiner #2 cited, then Application #1 will likely proceed to issue. Is it valid? Well – until someone else challenges it, then it probably is. This scenario wouldn’t be tested, however, until the Applicant tried to enforce Application #1 against a potential infringer. You can guarantee that the potential infringer, when faced with an accusation of patent infringement, will do every bit of investigation possible into the prosecution history of the application to ensure that the prosecution was proper. Upon figuring out that the Applicant failed to disclose prior art from one application in the prosecution of another application, the door to invalidity has been opened.
To summarize, the duty of disclosure of relevant prior art cannot be overstated. No matter how the prior art was discovered, and no matter when the prior art was discovered, the Applicant MUST fully disclose it to the PTO during prosecution of the application.