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What do I need to disclose about "prior art"?
Martin Earley
Martin Earley

A patent obtained through concealment of relevant prior art is not a reliable commercial asset

You know that it is important to advise your patent attorney of everything about your invention – but did you know it is also important to advise your patent attorney of everything you know about “prior art”?

There are requirements to disclose to Patent Offices relevant “prior art” (see below), including prior art documents and details of prior uses . Also if a patent attorney is aware of the “prior art”, the attorney can create strategies to strengthen your patent monopoly of your invention. When writing the patent specification defining your invention, the attorney can more clearly define the differences of your invention from the “prior art”.

“Prior art” are public disclosures of any matter which is relevant to whether your invention is new, novel and inventive and therefore patentable. This includes your own prior disclosure of your invention. “Prior art” includes any earlier publication in patent or scientific or general or commercial literature, or any other unfettered disclosure including any use of your invention or similar article or similar process.

With a recent change of law in New Zealand, nearly all countries now have “absolute novelty”. Therefore relevant “prior art” is any publication or use that has occurred anywhere in the world prior to the filing of your patent application. There are some exceptions of “grace period” and “unauthorised disclosure” or “official exhibition” but these exceptions only come into play in limited conditions and vary from country to country.

Patent Offices requirements to disclose relevant “prior art”

Some countries, like USA require you to disclose all of the prior art that you know about, and some countries like USA, India and South Africa require you to disclose all of the prior art that has been raised in any search or examination in any country regarding your invention. The Australian Patent Office (IPAustralia) used to require a declaration of such information but has relinquished that requirement. They now rely on knowing the progress of examination of other related patent applications in other official Patent Offices by an online review by the examiner.

In examination of your patent application the patent attorney also has the duty to make the amendments to the definition of the invention in the claims and to notify the examiner of the amendments and how the new claim definitions distinguish the prior art.

Therefore to meet the requirements of the patent process, it is necessary for the patent attorney to have full disclosure of the invention to fulfil Patent Office requirements and to determine strategies for detailing effective definitions of your invention.

An example

The seriousness of this requirement for disclosure is further emphasised in the recent case in the USA of American Calcar v. American Honda. The US Court decided that a patentee’s patents were unenforceable, and therefore ineffective, because the applicant had not disclosed everything to his patent attorney and therefore that information was not provided to the US Patent Office during examination and before the patent was granted.

Now you would expect that outcome if:

  • The patent attorneys and lawyers did not continue to meet their good faith obligations, and particularly those practising before the US Patent and Trademark Office bear a more significant duty of disclosure and candour.
  • the applicant did not act in good faith dealing with the Patent Office and particularly before the US Patent and Trademark Office
  • there was no disclosure of the relevant prior art and an active cover up.

However in this case, the applicant disclosed the actual document through their patent attorney to the US Patent Office but did not disclose the add-on information of photographs and a “Quick Tips” guide. Even though on a review by the Court this other prior art was not considered to invalidate the patent by making it not novel or merely obvious, it still was relevant prior art. It was inferred that the only reasonable reason for this prior art was withheld by the applicant must have been for the specific intent to deceive the US Patent Office. It was considered that the US Patent Office requiring a lower level of evidence than the Courts might have not granted all claims. But even so, the US law requires the Patent Office to be given the opportunity to consider all relevant prior art known by the applicant.

It should also be noted that in the US this duty of disclosure goes beyond the applicant and its patent attorneys and lawyers but also includes other individuals associated with the filing or prosecution, which includes all inventors and other parties that might not be inventors but are directly involved in the project.

What to remember

It is therefore important to remember:

  • Applicants, inventors and other involved persons need to disclose all relevant prior art to avoid invalidating any patent due to a technicality even though the information if disclosed might not have prevented a valid patent.
  • It is an ongoing duty of disclosure at the start and during prosecution of your patent application and until grant of your patent.
  • Disclosure should be made as soon as possible to your patent attorney, so we can determine a strategy to distinguish your invention from the disclosure, and to get the strongest and therefore the most readily enforceable monopoly rights.

In conclusion

A patent obtained through concealment of prior art, of which you are aware, is not a reliable commercial asset therefore disclose all you know to your patent attorney at the earliest possible time.

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About the author
Martin Earley
Director, Victoria Region Manager, Patent & Trade Mark Attorney
Martin Earley is a Melbourne IP attorney specialising in ICT patents, physics patents, engineering patent applications and patent oppositions.

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