When you file your patent application with the U.S. Patent and Trademark Office, your application (eventually) is reviewed by a patent examiner. Among other things, the patent examiner will compare your invention to the ‘prior art’ to determine whether your invention is new and is different enough to qualify for patenting.
But what is ‘prior art,’ and how does the examiner become aware of it? Prior Art is any publicly available information related to an invention that existed prior to the date that you filed your application. Examples of ‘prior art’ are U.S. or foreign issued patents or published applications, journals, social media, web pages, conference reports, scientific publications, and basically anything that is available to the public. The examiner learns about this ‘prior art’ in three ways – by admissions from you in your application, from you in the form of an ‘information disclosure statement,’ and by conducting a search him or herself.
An ‘information disclosure statement’ is a statement from you that discloses prior art of which you are aware to the examiner. Since you are a deep expert on your own invention, you are likely to know about relevant prior art. Your information disclosure statement is likely an excellent source of prior art for use by the examiner.
Why Disclose What Might Hurt You?
But, I hear you say, why would I ever disclose prior art when the examiner will use that prior art to deny my application?
Two reasons. First, if you know about important prior art relevant to the examiner’s decision and fail to disclose it to the examiner, then that’s called inequitable conduct and fraud and will result in your patent being declared invalid and prevent you from enforcing it in court later. Note that your failure to disclose prior art related to only one claim of your patent will nonetheless invalidate all of your patent claims of your patent.
The second reason is due to a seat change at the USPTO and is a major pro-patent move by the new Administration. In the recent case of Ecto World v. RAI Strategic Holdings, the USPTO Director determined that if you disclose prior art to the examiner in an information disclosure statement, then in most circumstances your resulting patent is immune from future challenge before the USPTO based on that prior art.
IPR Just Got a Lot Less Dangerous
The case arose in the context of a USPTO procedure called ‘inter partes review’ (IPR) by which your competitor can attack your issued patent without the expense of going to court. In the past, IPR has been a popular, low-cost way to kill many, many patents. In an about-face, the Exto World case determined that the USPTO will not even begin IPR proceedings where the prior art cited by the patent challenger was disclosed to the examiner through an information disclosure statement.
This change in IPR practice may sound arcane, but it’s huge and will save many patents. Yes, your competitor can still go to Federal Court to challenge your patent, but that takes real commitment and serious money. Even though this change is new, the USPTO is already seeing a drop in IPR petitions.
Note that some patent applicants hide the ball by presenting an examiner with immense information disclosure statements that include hundreds of prior art references. It is not reasonable to expect an examiner to review large numbers of references without guidance from the applicant as to which references are important. In the Exto World case, the applicant submitted an application data sheet with over 1,000 prior art references. The examiner requested that the applicant designate which of the references were important. The applicant did not reply. A competitor subsequently filed an IPR petition based on prior art listed on the information disclosure statement. The USPTO allowed the IPR to proceed.
The moral of this story? If you want to keep your patent:
a) File an information disclosure statement along with your application, and update the information disclosure statement if more information becomes available. Include the important prior art of which you are aware.
b) The typical number of references in an information disclosure statement is 50; don’t try to snow the examiner with an excessive number of prior art references.
Robert Yarbrough, Esq.