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Author Topic: Consequence of insufficient IDS  (Read 455 times)

Euro-Pat-Att

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Consequence of insufficient IDS
« on: 05-30-18 at 02:48 pm »

Dear Colleagues,

Id like to know a bit more about the IDS and particularly the consequences of not disclosing known publications.

During my training as a European patent attorney I was told that any publication that the applicant knows of and that may be relevant, should be disclosed as soon as possible. And if the applicant fails, this may mean that the patent will be revoked, for this reason alone.

This seems to simple to be correct.

I have a case now for a European client in which this may become relevant, so Id like to know a bit more. [one of my clients competitors is about to get a US patent and we are certain that the applicant did not disclose, at least not until now, a relevant publication that he has known about since at least 6 months]

In particular: How fast should relevant prior be disclosed to the USPTO, and what are the (real life, not theoretical) consequences of not disclosing relevant prior art.  Who decides, based on which considerations,whether this non-dislosed prior art is really relevant, or just marginally related to the patent?

Can anybody enlighten me, or perhaps direct me to website with a 1-2 page explanation?

Thanks a lot
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Robert K S

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Re: Consequence of insufficient IDS
« Reply #1 on: 05-30-18 at 06:01 pm »

If you think that your explanation of the Rule 56 duty of disclosure and subsequent inequitable conduct invalidation is too simple, this probably also means that it cannot be distilled to a "1-2 page explanation."  Perhaps the best distillation is MPEP 2001, which you ought to read if you haven't already.
 This review of Therasense and its progeny may be useful to you, but it is 80 slides long.  As exemplars of reasons why a patent practitioner might think it unnecessary to submit material when courts have decided otherwise, you might check out the dissents in American Calcar, Inc. v. American Honda Motor Co., 768 F.3d 1185 (Fed. Cir. 2014), Taltech Ltd. v. Esquel Enterprises, 604 F.3d 1324 (Fed. Cir. 2010), and McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 487 F.3d 897 (Fed. Cir. 2007), or listen to the oral arguments in Worldwide Home Products v. Time (which may hit close to home for many longtime readers of this forum).

There's a lot on this forum about Rule 56; use Google with the "site:" operator to search.
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eighteighteight

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Re: Consequence of insufficient IDS
« Reply #2 on: 05-30-18 at 07:29 pm »

This is mostly judicially created, not statutory, so it is subject to the whims of the court. Current thinking is basically that "relevant" essentially means: Would the patent have been granted as is if the examiner had seen the withheld art? This is decided in litigation. If there is even one claim that would not have been allowed due to the withheld art, then potentially the entire patent can be held unenforcable. However, you also have to show that the other party knew of the art and intentionally withheld it, which is a high burden.

If the art itself invalidates the patent in your opinion, then you would probably be better just invalidating the patent using the art. The inequitable conduct mainly seems to help in that you can make the whole patent (including all dependent claims) and possibly patent family unenforceable, whereas for invalidity you would have to go through each claim independently. But again, high bar to show intention. 

This is, of course, a vast simplification.
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Euro-Pat-Att

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Re: Consequence of insufficient IDS
« Reply #3 on: 05-31-18 at 03:07 am »

Thanks for your replies.

With respect to intentional: How does one show intentional?  We presented them the material anonymously via a third party observation for the EP equivalent, what more can we do to show intention? Write to them saying 'Listen, if we were in your shoes we'd put it in an IDS'?

With respect to relevant, I (personal opinion) would consider some piece of prior art relevant if the examiner would have used it in one of the office actions, because the absence of it will then definitely have altered the flow of the prosecution, irrespective of the final outcome.

Our intention is/was to avoid litigation (the client is a very small company not able to afford the costs of litigation) but at the same time to make the examiner aware of the art.

 



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Robert K S

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Re: Consequence of insufficient IDS
« Reply #4 on: 05-31-18 at 10:19 am »

Write to them saying 'Listen, if we were in your shoes we'd put it in an IDS'?

That is what happened in Worldwide Home Products.  Because intent is a state of mind and cannot be definitively proven unless you have an admission on record ("I knew about that art and I intentionally did not send it to the USPTO!"), intent is shown inferentially.  A factfinder (judge or jury, depending on the circumstances) will decide whether a strong inference can be drawn as to intent to withhold information material (not "relevant") to patentability (not "to altering the flow of prosecution").  Read those cases if you haven't already; you'll be in a much better position to talk about the standards after you've looked them over.
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