Prior Art And Duty To Disclose

In the United States every inventor, the patent attorney, and the assignee all have a duty of disclosure with respect to known prior art, a duty that continues throughout the prosecution of the application. The punishment can be severe, including invalidation of the patent for fraud on the patent office (currently referred to euphemistically as "inequitable conduct"). But most foreign countries have no such duty to disclose. Two exceptions are Japan and Australia , at least with respect to written prior art documents.

Several countries want to see a listing, or even copies, of all prior art references cited against corresponding applications in other countries. If the patent family is large, it is probably a good idea to keep a copy of all cited references in a single folder, in addition to keeping copies in the various individual country folders.

A relatively new regulation in Japan requires not only a listing of previously cited prior art, but also statements as to each reference. The statements must be sufficiently detailed to point out the specific portions of those references that make them relevant as prior art or related art. So far Japan stands alone among the major countries with respect to this new rule. But it would not be surprising if other countries followed suit. In that event it becomes ever more critical to take the time to draft the claims correctly on the first filing. With foreign countries sharing prior art information, and with communications between U.S. attorneys and their foreign associates falling outside the scope of attorney-client privilege, there are ever fewer places to hide.

Other than providing a listing of known prior art (U.S. practice) or prior art identified during prosecution in other countries (most foreign practices), there is currently no duty to disclose prior art to the patent offices of most foreign countries. This is extremely important when it comes to marginal disclosures. Assume, for example, that an inventor produces a working model of his software, and brings it to COMDEX or some other convention in the U.S. that relates to computers or software. He doesn't buy a booth, but he does walk around with a laptop, showing off the software to anyone who will take the time to review it. Some time after the conventions he decides to file patent applications throughout the world. In the United States he is clearly allowed to do so, provided the filing falls within the one-year grace period. If, however, he waits longer than a year to file, he likely will be time-barred because he must disclose his efforts in the convention to the U.S. patent office. The inventor may or may not also be barred in foreign countries. The question is the more subtle issue whether the invention was known in the foreign country at the date of filing (or effective priority date). Just because the invention was technically "known" in the United States does not mean that the invention was "known" in Japan or Korea. The critical point here is that the inventor usually has no duty of disclosure to the foreign patent offices. If the foreign examiner cannot find an invalidating reference, then the patent will properly issue. This is why it was critical in the example that the inventor had no booth at the convention. If he had rented a booth, his invention may well have been disclosed in some on-line of exhibitors, and the foreign patent examiner might well have used that as prior art.

Note that there is no duty whatsoever, on the part of the inventor, assignee, or patent prosecutor, to search for prior art. And obviously, if they know of no prior art, then they have no duty to disclose it. Indeed, some practitioners intentionally omit any prior art search from their pre-filing procedures just so that they can avoid disclosing prior art to the examiner. That strategy, is a fabulous way for patent attorneys to build up their practices, but is just terrible for the clients. All it does is encourage clients to waste their money on futile patent applications, increase the amount of arguing back and for the with the patent examiner, and greatly increase the possibility of costly litigation.