Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 110

During the first meeting with your patent professional regarding an invention, the patent professional will prudently ask you to disclose to her or him all information you are aware of regarding the state of the prior art relating to the subject matter of your invention. This involves disclosure to the patent attorney of your knowledge of printed or electronic publications, similar devices already existing in the market, issued patents, and any other prior acts or materials of either the inventor(s) themselves or others that may relate to the subject matter of the invention. The reason is that Rule 56 of the USPTO Rules (37 C.F.R. §1.56) requires that an inventor and the inventor’s attorney or agent disclose “information they are aware of which is material to the examination of the application” to the Patent Examiner prior to the commencement of examination, and during the entire time of the examination process. The determination of whether such prior art would be material to examination depends upon whether that prior art would be considered by the Examiner as information which is material to patentability in deciding whether or not to issue the patent. Normally, an Information Disclosure Statement is submitted to the Patent Examiner at the time of filing the application, setting forth all prior art that the inventor and the attorney are aware of that is material to examination of the application. This would include all prior art that was uncovered by a pre‐filing patentability search.

In my judgment, the purpose of the prior art disclosure rule is twofold. First, the applicant and the attorney are legally held to a strict duty of candor in making a showing before the USPTO of the reasons they believe the inventor is the first inventor. It is no longer possible to attempt to hide prior art that you are aware of from the Examiner, and obtain issuance of a patent upon the theory that the Examiner will never find that information. In this regard, the disclosure to the Examiner must also include any activities of the inventors themselves which are material to consideration as possible statutory bars for granting a patent, such as public uses, offers for sale or sales, or public knowledge prior to your patent application filing date, as explained previously. By way of example, an explanation of the inventor’s activities relating to the invention that transpired more than 1 year prior to the filing date, which activities could or could not be considered as public disclosures, should be presented to the Examiner, along with an explanation as to why such activities were only experimental or test activities and do not give rise to a disabling “public use,” “on sale,” or “publicly available” situation.

The second reason for submitting this prior art to the USPTO is that the patent application is prepared with a view toward ultimately being enforced, if necessary, before a federal court, explaining to the court every step taken in developing the invention and obtaining patent protection. In patent litigation, the lawyer representing the alleged infringer will introduce into evidence all prior art believed to be relevant in an effort to invalidate your patent by showing that your patent should not have issued in the first place. However, under existing law governing patent litigation, the court can give short shrift or completely ignore prior art that was previously considered by the Patent Examiner during the examination process, if such prior art is presented as part of an invalidity defense in court by the alleged infringer. In simple terms, the court is asking defense counsel to present prior art that was not previously considered by the Patent Examiner. Therefore, the more prior art you present to the Examiner and introduce into the history of the examination of the patent application, the more difficult it becomes for a lawyer representing an infringer to obtain additional prior art material in an effort to invalidate the patent. Thus, in my opinion, it is definitely to the inventor’s advantage to have as much prior art as possible presented in the USPTO examination and prosecution history and reviewed by the Examiner, as a way of strengthening the patent if and when that patent faces enforcement in a court proceeding.