The Duty of Disclosure When Filing A Patent Application

By: Mark R. Malek

Generally speaking, the patent application process is not an adversarial one.  In other words, it is not like Business Litigation where there is a plaintiff and a defendant with opposing views that are generally not aligned.  Instead, the patent application process is one in which the patent applicant (inventor) works hand in hand with the patent Examiner to ensure that the appropriate protection is provided by the Patent Office to the invention.

Trust me when I tell you that I know the patent application process can feel adversarial at times.  Many inventors will often receive a rejection of their invention in the form of an Office Action issued by the Examiner.  An Office Action is the Examiner’s findings of whether or not the invention is patentable.  When the patent application is examined, the Examiner will conduct a search of prior art and compare the prior art to the invention as expressed in the claims of the patent application.

In order for the Examiner to do a good job of examining the patent application he/she has to be made aware of all of the prior art.  In other words, there is no hiding the ball on the Examiner.  Therefore, the inventor has a duty to disclose any prior art that they are aware of to the Patent Office.  This is done by filing an Information Disclosure Statement (IDS).  After the IDS is filed, the Examiner will indicate that he has reviewed each and every reference by putting his initials next to the reference.

I will post another few articles soon about the duty of disclosure, but to sum it up, in exchange for 20 years of protection, the Patent Office requires that you, the inventor, disclose all that you know about your invention, as well as any prior art that you know of that is out there.