Let’s say you know of certain patents and existing products that bear some resemblance to your invention. They’re similar enough to yours in one respect or another that they might raise an eyebrow, but you’re confident that they differ enough from your invention that you will be able to obtain a patent. Knowing this, would you make any mention of these other inventions and products in your patent application, or no?
To the surprise of many inventors, you are actually required by law to disclose any known information relating to your patent claims.
Under 37 C.F.R. 1.56, sometimes referred to as ‘Rule 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.
This means that if you know of other inventions that bear similarities to yours, you are compelled to disclose your knowledge of these inventions. In addition, if you previously sold the item you’re trying to patent, or you made and sold a product similar to it, you must disclose this.
While it might seem like the USPTO’s requirement is simply an appeal to the better nature of inventors which can be taken lightly, it actually has some serious teeth to it. According to Rule 56:
…no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.
In short, if you know of material relevant to the patentability of your invention, you fail to disclose it, and your previous knowledge is later revealed, your patent will be revoked upon the basis of your failure to disclose this information.
This is not just a hypothetical threat.
Claims of patent infringement are often parried is by counterclaims alleging the patent is invalid.
When this happens, prior art is carefully examined, as well as information you had on hand during the development of your invention.
Any evidence that you failed to disclose something can be devastating. An August 2000 article uncovered two studies which indicated that the probability of a patent being found invalid due to undisclosed prior art was anywhere between 40% and 80%.
To add insult to injury, if your patent becomes unenforceable due to your failure to disclose prior knowledge, your competitors and customers can sue you for violating the Sherman Antitrust Act for unlawfully using an unenforceable patent to quash competitors and drive the price of your product up. Such suits are eligible for treble damages, as well as attorney’s fees, and can easily devastate an inventor both financially and professionally.
This is why I always advise clients that, when in doubt, file an information disclosure sheet.
While I have never seen a self-filer file an information disclosure sheet, I am always able to convince my clients to file one where it’s wise to do so. This suggests that self-filing inventors don’t file disclosure sheets out of a desire to suppress information, but simply because they don’t understand that doing so is a key means of strengthening their patent.
When a patent is examined in court based upon a claim of invalidity, being able to show that inventor provided the original patent examiner with information about prior art goes a long ways towards reinforcing the patent’s validity.
If you are uncertain as to whether you should file an information disclosure statement with your patent, the Law Office of Michael O’Brien can help you evaluate the best course of action for successfully obtaining a patent and protecting it from any and all potential legal challenges. For more information, contact us by calling (916) 760-8265, or sending us a message using our contact form.