United States: The Duty Of Disclosure Before The U.S.P.T.O.

To Disclose Or Not To Disclose, That Is The Question

In contrast to practice before the Turkish Patent Institute (TPI), the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), and the World Intellectual Property Organization (WIPO), which do not require any disclosure of known prior art for a patent application filing of first instance2, the United States Patent and Trademark Office (USPTO) imposes an affirmative duty on a patent applicant to disclose known and material prior art during the life of a patent application. Certain other patent offices, such as the Chinese State Intellectual Property Office (SIPO) and the Japanese Patent Office (JPO), have a low-degree requirement of disclosure. Prior Chinese law required patent applicants to disclose prior art relevant to examination at the time of requesting substantive examination, but under the current law and practice before the SIPO, applicants are only required to submit search reports upon receipt of official notice. Before the JPO, not observing their duty to disclose prior art has no effect on the validity oof a patent, thus making the JPO disclosure requirement effectively toothless.

However, in the United States, every named inventor, any assigned owner, as well as the representative patent attorney and firm, are all responsible for supplying the USPTO patent examiner with prior art that is: (1) known or discovered during the course of the prosecution up to the date of patent issuance (37 C.F.R §1.97); and (2) material to patentability (37 C.F.R. §1.56). Current USPTO regulations consider information as material if it is inconsistent with the applicant's position, if it is not cumulative to information already of record, or if it contributes to a position for unpatentability. U.S. courts have considered as material "any information that a reasonable examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent" (Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1234 (Fed. Cir. 2003). This requirement to provide known and material prior art is acknowledged as a duty of disclosure to the USPTO, failure of which can lead to unenforceability of the entire issued patent.. In U.S. practice, this duty of disclosure may be met by filing a list of prior art references through an Information Disclosure Statement ("IDS").

There is no duty to actively search for and find prior art, and filing of an IDS is not construed as a representation that a search has been made (37 C.F.R § 1.97). Indeed, some practitioners do not file an IDS at the time of filing an application because they do not know of any particular and material prior art based upon the state of the claims as filed. However, one must disclose what one knows. Failure to advise the USPTO of material prior art known to the inventor, assignee, or patent attorney can result in unenforceability of the patent for "inequitable conduct", rendering the entire patent useless. Inequitable conduct is established by showing that: (1) the failure was material (but for the withheld or misrepresented information, the USPTO would not have issued the patent); and (2) the person having a duty to disclose intended to mislead by misrepresenting or failing to disclose the material information (Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 , 1287 (Fed. Cir. 2011).

It is usually best practice for practitioners to file an IDS when the application is initially filed. The information is most likely to be fresh on the minds of those with the duty to disclose and least likely to be forgotten or misplaced, and completing the IDS at that time should require the least amount of additional work. It is true that some practitioners file an initial IDS after filing the application,, but there is little or no benefit in doing so. If possible, it is advantageous to file an IDS before the examiner issues a first Office Action to avoid fees (USD $180 for a large entity) and certification statements that may be required for filing an IDS afterwards.

Compliance with the duty of disclosure can be simplee and straightforward. The patent attorney seeks input from the inventor(s) and assignee (if any), reviews the references identified during the application preparation process and in a prior art search (if any),, and discloses relevant references to the patent office. Where there has already been a PCT search, the IDS is usually a listing of the citations provided inn the PCT International Search Report. Putting together the IDS is fairly straightforward, including filling out USPTO forms PTO/SB/08A and/or PTO/SB/08B or substantially similar substitute forms.. Law firm service fees can range from about $100 - $200, depending on the amount of time involved in corresponding with the client, securing copies of cited documents when necessary,, and so forth, and the USPTO fee is USD $180 or less per filed IDS, depending upon the timing of filing and entity status.

As noted above, the IDS is submitted on a form from the USPTO or very close substitute form. It is not sufficient to merely identify a known prior art reference(s) in the body of the application specification. In addition, some practitioners include comments that distinguish each of the listed references, but this practice is not recommended. Such comments can be of help to the examiner but is dangerous to the applicant since the IDS and other file history can be used against the patent holder both during prosecution and later on in the event of litigation. In the absence of comments, the mere filing of an IDS is not construed ttoo be an admission that the information cited in the statement is considered to be material to patentability (37 C.F.R § 1.97).

One can file a second, third or other number of IDS during the prosecution of the patent application. Such supplemental filings are usually necessitated by the practitioner receiving prior art references from a related PCT application or from a foreign patent office examining a foreign counterpart application.

For applications with many counterpart foreign applications and/or related applications, compliance with the duty of disclosure can become complicated and difficult. What is deemed material to patentability may also be subjective, as one person's view on materiality may differ from another. Furthermore, it should be noted tthe information disclosure is based on what is being claimed, and claim interpretation is another matter unto itself. Accordingly, it is a best practice to submit all the references cited from a foreign patent office or all the relevant references from a state-of-the-art search. Thus, as a general rule, one should disclose all the references cited during PCT or foreign prosecution of the same (or closely related) application. In some situations, a determination of whether or not to submit a reference discovered during the life of a patent application may be required. A patent attorney may be of assistance in making a determination whether or not a reference is material to patentability and non-cumulative, which would fall under the duty of disclosure.

Although possibly burdensome at times, in particular for an application filed in many countries or an application that has manyy related applications, information disclosure should be viewed as a benefit, both to the patent office and the inventor. It may help the examiner to find close prior art or to determine the state of the art because examiners are currently being allotted very little time for their prior art searches. Furthermore, disclosure helps the applicant and assignee because all references properly cited to the examiner are listed on the face of the issued patent. If the patent is ever litigated, the courts and juries often give considerable deference to the patent office, and it can be quite difficult to invalidate a patent using prior art that was considered by the patent examiner and listed on the face of the patent. Based upon similar reasoning, iif the patent is ever considered for sale or license, many buyers or licensees tend to consider as more valuable a patent that lists more references as considered by the examiner. Thus, a prudent patent attorney would do well to disclose for consideration the known relevant references during the prosecution of an application.

Below are some "pitfalls" to be aware of in satisfying the information disclosure requirement.

  • One problematic situation arises when an inventor works for a company that has a large collection of journal articles, patents, or other references concerned with the subject matter of the invention. Technically, all such references may be deemed to fall within the knowledge of the inventor and/or the assignee company, and are subject to being disclosed.
  • A similar issue is raised when a patent attorney is drafting a patent application in an area where the attorney has considerable experience. That experience can mean the attorney has numerous close references that were cited against other patent applications, and sometimes even for other clients which can llead to potential conflicts of interest.. All of those references should be considered in satisfying the information disclosure requirement.
  • Another problem when filing an IDS can be timeliness of the disclosure. The regulations reward disclosure made within three months of the application filing date, or at least before issuance of the first substantive Office Action. As noted above, the safest strategy is to make the disclosure at the time the application is filed. Later disclosures are allowed up to the ddate of a notice of allowance, and may be needed in view of references identified by the PCT or foreign patent office examiners. Unfortunately, late filings of information disclosures are penalized withh an additional fee ((37 C.F.R. § 1.17).
  • Still another possible pitfall is disclosing too many references. In the past, patent attorneys reportedly disclosed hundreds of references at a time to intentionally bury the important references among a massive number of possibly irrelevant references. That is now prohibited, and the rule is that the disclosure should include all reasonably relevant references that are not cumulative (i.e., duplicative).
  • References in languages other than English must be translated. Thus, if one has a patent in French, it is best to search for and submit a corresponding English language patent or publication.
  • Be careful not to identify references as prior art. The term "prior art" is a term of art in the patent world, and refers to publications having a filing date earlier than the priority date of the application and that are important to patentability. Identifying a document as prior art is an admission against the applicant's interest that the document is indeed prior art.


1 Senior Associate at Deriş Patents & Trademarks Agency, Istanbul, Turkey; U.S. Patent Attorney and Attorney-At-Law

2 Some offices, such as the EPO, may request a copy of results from a search carried out on a priority patent application (EPC, Art. 124, Rule 141).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Wolf, Greenfield & Sacks, P.C.
In association with
Practice Guides
by Mondaq Advice Centers
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Wolf, Greenfield & Sacks, P.C.
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions