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Panitch Schwarze | Duty of Disclosure

At Panitch Schwarze Belisario & Nadel LLP, we proactively address intellectual property issues related to our clients’ Duty of Disclosure to the U.S. Patent and Trademark Office. Under the Duty of Disclosure, the Patent Office requires applicants to disclose any publicly available references, known as “prior art,” which may be relevant to the patent application.

Compliance with this duty strengthens a patent by placing all known relevant prior art in front of the examiner. Examiners typically will sign or initial the lists of submitted references to indicate that they have been substantively considered, and the references then will be listed on the face of any patent that issues from the application. Since there is a presumption that the Patent Office has determined that an allowed application is patentable over the submitted prior art, this lessens the potential for such prior art to later be used against our clients’ patents in litigation.

Failure to comply with the Duty of Disclosure can have serious consequences. The most significant of these is an allegation of Inequitable Conduct, which is a defense in patent litigation that, if proven, renders the patent unenforceable. If a court were to find that the Patent Office would not have issued a patent claim if it had been aware of the non-disclosed prior art reference, and if the court finds that there was a deliberate decision to withhold the reference (i.e., drawing an inference that there was an intent to deceive the Patent Office), that could result in the patent being unenforceable against future infringers.

At Panitch Schwarze Belisario & Nadel LLP, we actively work with clients to disclose all relevant information to the Patent Office, whether found through searches, related U.S. applications, counterpart applications in foreign countries, or any other means. We take the Duty of Disclosure seriously in order to procure for our clients the strongest possible patent that may serve as business assets for years to come.

Author:

  • Aaron Pereira, Counsel | apereira@panitchlaw.com

Compliments of Panitch Schwarze Belisario & Nadel LLP – a member of the EACCNY.