Frequently Asked Questions (FAQ)

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An “Examiner” — in the context of patent applications — is an employee of the USPTO, usually with a scientific or engineering background, tasked with reviewing patent applications for eligibility, including novelty and non-obviousness. Fundamentally, they act as an ‘advocate for the public,’ working to ensure that the public receives a disclosure of an invention that is both novel (new) and non-obvious in exchange for the period of exclusivity that a patent grants to an inventor. As such, they:

… serve as a judge on patentability with respect to inventions claimed in a patent application under conditions for patentability set forth in Title 35 of the United States Code …

The Role of the Patent Examiner

In other words, an Examiner is the person at the USPTO tasked with reviewing your patent application, and working to make sure that the claims do not overlap what is already publicly known. They often issue one or more rejections of your claims (as well as objections and informative actions) during the prosecution process. They may also allow one or more interviews with your patent professional, where they will discuss the claims and hopefully work to find an area of agreement that may expedite allowance of one or more claims.

Category: Terminology

In almost every patent application, your patent professional will usually talk about filing an “IDS” with a list of literature that may be related to your application — patents and patent applications, websites, articles, and more.

“IDS” is simply the acronym for an “Information Disclosure Statement,” a straightforward method provided by the USPTO for applicants to submit any ‘art’ they may be aware of that might be considered to affect the patentability of the invention.

Many inventor’s first impulse is to let the USPTO find any prior art by themselves. However, this is not really helpful — first, the more prior art that is considered, the stronger any resulting patent is. Second, the duty of disclosure is required by law as part of the ‘exchange’ inventors make in order to receive a period of exclusivity.

A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. (emphasis added)

The law provides that using an IDS to submit all required information meets this “duty to disclose,” which helps streamline the process of fulfilling this duty.

The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§1.97(b)-(d) and 1.98. (i.e. an IDS) (Emphasis added, note in parentheses added)

It is important to note that this duty to disclose is taken very seriously. If it is determined that the duty to disclose has not been properly fulfilled, the patent application will be canceled.

However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.

Of course, this can make it very appealing for a competitor looking to invalidate your patent at a later date to carefully scrutinize whether you — and your patent professional(s) — have met your duty to disclose. If it is found that the duty to disclose was not properly met, your patent can be found unenforceable — such as was the case in McKesson v. Bridge Medical when a patent was found unenforceable because a patent attorney did not disclose an Office action found to be material to patentability.

On the other hand, there is very little incentive not to file an IDS, especially because providing a reference with an IDS is not an admission of prior art. It’s hard to disclose too much.

Mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims.

Even if you don’t consider a reference as prior art, but think a reasonable person may consider it helpful for an Examiner to know, there’s multiple reasons to include it, and not usually any good reasons not to.

Therefore, you and everyone involved with your patent application — including your patent professional — should carefully submit any references (including previous disclosures, trade shows, sale offers, information regarding enablement, etc.) that might be able to be considered “material to the patentability” of the invention as claimed. Erring on the side of disclosure can be one of the easiest ways you can strengthen any patent that issues from your application.

The United States Patent and Trademark Office (USPTO) is the federal agency for granting U.S. patents and registering trademarks. In doing this, the USPTO fulfills the mandate of Article I, Section 8, Clause 8, of the Constitution that the legislative branch “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Under this system of protection, American industry has flourished. New products have been invented, new uses for old ones discovered, and employment opportunities created for millions of Americans. The strength and vitality of the U.S. economy depends directly on effective mechanisms that protect new ideas and investments in innovation and creativity. The continued demand for patents and trademarks underscores the ingenuity of American inventors and entrepreneurs.
Category: Terminology

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