With patents, everything starts and ends with the claims which means that the specification, the arguments presented during prosecution and all of the patent applicant’s efforts affect the language of the claims. For example, a patent specification must enable one of ordinary skill in the art to make and use the invention as recited in the claims. Alcon Research Ltd. v. … [Read more...]
Duty to disclose
The USPTO places a burden on everyone involved with the filing of the patent application to in good faith disclose material information regarding the patentability of the invention. Examples include the closest prior art, statements made that limit the invention.
Browse related articles below.
Supplemental examination allows a patent owners to submit information relevant to an issued patent in order to avoid any charges of inequitable conduct during litigation and to prevent defendants from making arguments that the patent is unenforceable because of “bad” acts or omissions of the patent owner during examination of the patent, such as not disclosing a key reference … [Read more...]
The USPTO has released the final rules to implement the provisions of the America Invents Act effective September 16, 2012. The final rules relate to: Preissuance Submission: Mechanism by which the public can block issuance of a patent. Inventor’s Oath/Declaration requirements: Relaxes the requirements so that it is easier to resolve issues related to uncooperative … [Read more...]
On March 16, 2013, the United States transitioned from a first to invent system to a first to file system under the America Invents Act (“Patent Act”). Inventors and businesses should consider the following aspects of the law when implementing a patent protection strategy. General rule and the exceptions Under the Patent Act, any disclosure dated prior to the filing date … [Read more...]
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. … [Read more...]