Once an application is filed, everyone substantively involved in the filing of the patent application owes a duty of candor and good faith to the Patent Office. This duty requires individuals to disclose (i.e., duty to disclose) relevant information to the Patent Office that is related to the invention, even information that might render the claimed invention unpatentable. The duty to disclose attaches to inventor(s) and the patent attorney. However, the Patent Office regulations do not limit the duty to only these individuals but expands the duty to all persons substantively involved in the prosecution of the patent application.
In Avid ID v. Crystal Import Corp., 2009-1216 (Fed. Cir. April 27, 2010), the Federal Circuit reviewed who is included in the definition of those substantively involved. The president and founder, Dr. Stoddard, of Avid was involved in all aspects of Avid, which is a closely held company. Dr. Stoddard hired engineers to reduce his concept to practice. He signed the small entity status affidavit. He was included in substantive communications with foreign patent counsel. Although he was not an inventor of the patented invention, he was deemed to have been substantively involved in the preparation and filing of the patent application thereby imputing the duty of candor and good faith to disclose information.
During the patent examination phase, Dr. Stoddard did not disclose sales demonstrations that occurred more than one year prior to the filing of the patent application. Hence, the Court held that the patent issue is unenforceable due to inequitable conduct.
The take away point on this case is to lean on the side of disclosure. If you think that someone is substantively involved with the patent application (except for those with ministerial duties) or that some event is related to the patent pending invention, then disclose or bring this information up to the patent attorney who can deal with the situation.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Irvine Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.