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Author Topic: Are communications regarding whether to submit prior art privileged?  (Read 672 times)

MR

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If I advise a client (e.g., in an email) that it's probably not worthwhile to file an RCE to submit a newly found piece of prior art on an IDS, is that communication privileged (e.g., under the attorney-client privilege) or could an adversary compel its production (e.g., under the crime-fraud exception), if alleging that we withheld it with an intent to deceive the USPTO? 
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mersenne

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I believe the crime/fraud exception is narrower than one might expect, but I haven't researched it (my hunch comes from asking counsel in a plaintiff-v-defendant case, where the plaintiff is a lawyer, whether I could get his deposition on his knowledge of defendant's activities, where the lawyer withdrew because of "concerns" about the ethics of what defendant was doing.)

If you're advising not to submit art, then if you're going to put it in writing, I would want a comprehensive analysis for why it's not material to patentability in the same writing, on the assumption that it would be discoverable.  If you have a good reason for not submitting (so you're solid on Rule 56) but you're not going to write it all up, then I think you don't want any part of it in writing.

If you don't have a good reason for not submitting, then you probably want something in writing saying that you do recommend RCE to consider the art.

If somebody's going to allege fraud on the office, they're going to allege it no matter what you do.  I have a colleague who's hyper-vigilant about this stuff, to the point where she tells a story of pulling a case back 2-3 times in response to a competitor dribbling out art that wasn't even seriously relevant, but her risk-o-meter said to file the RCE.  Apparently, the client eventually fired her, took the patent, and then had to deal with fraud-on-the-office allegations for some other art that was dropped on them before issue.
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bluerogue

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Without commenting on the ethical/legal implications of whether you should submit the art, the PTO does offer the QPIDS program so you don't necessarily have to file the RCE to get the art considered.

https://www.uspto.gov/patent/initiatives/quick-path-information-disclosure-statement-qpids
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

astrojudo

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QPIDS does not necessarily obviate the need to file an RCE as you still need to make the certifications (e.g. reference not known more than 3 months).
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Tobmapsatonmi

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Also (haven't looked at it in a while), I thought QPIDS was only for the case where you'd already filed the issue fee, THEN the art popped up thereafter.

Not your usual "I got allowance then art popped up" situation.
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bluerogue

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Also (haven't looked at it in a while), I thought QPIDS was only for the case where you'd already filed the issue fee, THEN the art popped up thereafter.

Not your usual "I got allowance then art popped up" situation.

Internally there are two QPIDS paths.  One for prior to issue fee, one for after.  Both are considered QPIDS cases and we get up to 3 hours of other time to consider the IDS. I think only the after issue fee is publicly noted as QPIDS, but internally both are considered under the QPIDS program.
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

Tobmapsatonmi

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Internally there are two QPIDS paths.  One for prior to issue fee, one for after.  Both are considered QPIDS cases and we get up to 3 hours of other time to consider the IDS. I think only the after issue fee is publicly noted as QPIDS, but internally both are considered under the QPIDS program.

Great to know, thanks much.
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