You and your patent attorney have a ‘duty of candor’ to the USPTO

Duty of Candor to the USPTOYou’ve created a great invention.  You hire a patent attorney and file a patent application.  While your application is pending, you poke around in Google Patents and come across prior art that would preclude a valid patent for one of your claims.  Do you tell your patent attorney?  Do you tell the patent examiner?

You and your patent attorney have a ‘duty of candor‘ to the USPTO, meaning that you’re supposed to disclose any relevant prior art of which you are aware.  But what if you don’t?  Maybe your omission will never be discovered.  Maybe you’ll get away with it and have a great product that will make lots of money.  Plus, you reason, the prior art that you discovered only relates to one claim out of twenty claims of one patent, and the patent is only one of a family of ten related patents.  You conclude that the prior art is not very important in the grand scheme of your ten patents, and your omission is not likely to be discovered anyway.  So, you keep the prior art to yourself, and you don’t inform the patent examiner.

A good decision?

Hmmm.  To enforce your patent, you have to tell others about it, such as in a demand letter to an infringer or in a lawsuit against the infringer in Federal court.  Your infringer (or your infringer’s lawyers) is likely to poke around in Google Patents, too.  Perhaps they will find the same prior art that you discovered and use it against you to challenge your patent before the USPTO or in court.  But that’s not so bad, is it?  You’re no worse off than if you told the examiner about the prior art.  Plus, you’ll still have the nineteen other claims of the patent and ten other patents in the family.

Or will you?  The infringer’s lawyers won’t stop there.  They will examine your documents and the contents of your computers and your emails and your backup drives.  They will question you and everyone you know under oath to find out what you knew and when you knew it. They may be able to demonstrate that you knew about the prior art and failed to disclose it to the patent examiner.

Now things get sticky.  If the infringer’s lawyers can demonstrate that (a) the patent examiner would not have allowed at least one patent claim because of the non-disclosed prior art, and (b) that you intended to deceive the examiner (which can be inferred from the circumstances), then the Federal judge will conclude that you engaged in ‘inequitable conduct.’  Inequitable conduct is the ‘atomic bomb‘ of patenting.  If the judge so concludes, then the judge will invalidate the ENTIRE PATENT – that is, all 20 claims, even though the failure to disclose only applied to one claim.  The judge may not stop there.  The judge may invalidate THE ENTIRE FAMILY OF PATENTS – in this case ten patents – because of the inequitable conduct relating to one claim of one patent.  Yikes!

Let’s go a step further.  Let’s say that your patented product is a drug that is purchased with Federal monies for Medicare and Medicaid.  Your invalid, inequitably-obtained patent causes the Federal government to pay inflated prices for your drug.  You may be subject to suit and penalties under the False Claims Act by the Attorney General or by a private citizen.

The bottom line – if in doubt, disclose.

— Robert Yarbrough, Esq.