Prior Art Checklist
Inequitable conduct cases usually arise out of a failure to notify the patent office of relevant prior art or a prior public use, publication or sale of an invention. Other categories of misconduct include submission of misleading comparative data during prosecution, or misleading the patent office regarding the date of invention. A checklist addressing these areas would include the following:Dennis Crouch has some additional notes on the Patently-O blog, where comments expand on the discussion.
1. Remind your client of the duty to disclose relevant prior art, including related copending applications (and make sure to file this prior art with the United States Patent and Trademark Office). Make sure that the examiner at the patent office is aware of activity in related cases, if handled by other examiners.
2. Ask about attendance at conferences, posters, and abstracts submitted to journals.
3. Remember to file prior art uncovered in foreign searches.
4. Ask about offers for sale or other public disclosures through use or publication.
5. If you are filing a declaration, make certain that it is clear to the PTO where the interests of the declarant lie. Do not conceal from the PTO facts known to you that are adverse to your client’s position (such as negative data), in order to advance your client’s case.
6. Discuss the date of invention and related evidence with your client.
Keeping a checklist permits one to easily keep track of new developments in the law, by merely updating the checklist as new practice requirements (based on changes in the law) develop. The above checklist is just a start.
Is there anything else that should be added to this checklist?
