G & B Seminar 2006 Duty of Disclosure for Enforceable/Valid U.S. Patents Daniel Moon

2 Why care about Duty of Disclosure?

3 U nenforceability / Invalidity

4 - The patentee submitted a full Japanese language reference and a partial translation, but the translation was focused only on the less material portions of the reference. - Federal Circuit affirmed that patent owner committed misrepresentation by willfully misrepresenting a material prior art reference. - Patent was held unenforceable. FULL ENGLISH TRANSLATIONS ! Semiconductor Energy Laboratory Co. v. Samsung Electronics Co. (Fed. Cir. 2000)

5 Li Second Family Limited Partnership v. Toshiba Corp (Fed. Cir. 2000) - Patentee did not adequately submit decision by BPAI, which affects priority date for claims in Suit. - Court confirmed that patentee affirmatively misrepresented to the examiner that the application was entitled to the earlier filing date of the earlier filed applications, even though he knew the Board had reached a contrary result. - Patent was held unenforceable OTHER USPTO DECISIONS !

6 Critikon, Inc. v. Becton Dickinson Vascular Access Inc. (Fed. Cir. 1997) - In reissue being sought, patentee failed to cite prior patent and disclose an ongoing litigation to PTO. - Court held that the details and documents from the litigation, insofar as they are material to patentability of the reissue application should accompany the application as filed, or be submitted promptly thereafter as possible. - Patent was held unenforceable. RELEVANT LITIGATIONS !

7 Armour & Co. v. Swift & Co. (7 th Cir. 1972) - Patentee did not disclose other relevant copending applications to the examiner. - Court held that the patentee has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent. - Patent was held unenforceable. COPENDING APPLICATIONS !

8 Hoffman-La Roche, Inc. v. Promega Corp. (Fed. Cir. 2003) - Patentee stated in the specification that an experiment was conducted when in fact the experiment was not run. - Court held that it is a misrepresentation of the facts. - Patent was held unenforceable. EXPERIMENTS !

9 Gemveto Jewelry Co. v. Lambert Bros., Inc, (S.D. N.Y 1982) - Patentee’s foreign council did not disclose to patentee’s U.S. council the prior art cited by the Dutch Patent Office in connection with the patentee’s corresponding Dutch application. - Court held that Foreign patent attorneys representing applicants for U.S. Patents through local correspondent firms surely must be held to the same standards of conduct which apply to their American counterparts. - Patent was held unenforceable FOREIGN COUNTERPART PRIOR ART !

10 Fox Industries Inc. v. Structural Preservation Systems Inc. (Fed. Cir. 1990) - Patentee did not submit sales brochure that was material to the PTO. - Court held the sales brochure was withheld from the PTO with intent to deceive. - Patent was held unenforceable and $160,000 of Attorney’s fee was awarded. SALES BROCHURE !

11 Brasseler, U.S.A. IL. P. v. Stryker Sales Corp. (Fed. Cir. 1990) - Patentee, who was also corporate executives, did not inform the PTO of the sale. - Court held patentee chargeable with knowledge of he sale and its materiality had a duty to inform the PTO of the sale and should have informed his patent attorney of the sale. - Patent was held invalid and $465,000 of Attorney’s fee was awarded. PRIOR SALES !

12 TIP for Validity/Enforceability “Cite Prior Art”

13 Prior Art Citations Strengthening U.S. Patents Against Attacks Based Upon Inequitable Conduct

14 Inequitable conduct Before U.S.P.T.O. is - Failure to provide material information to Examiner - With an intent to deceive U.S.P.T.O.

15 What material information is often not submitted, and should be ?

16 Prior Art Citation - Tip 1 Check to insure Citation of all relevant… - Prior Patents of Inventor - Prior Patents of Assignee - Co-pending, Commonly Assigned Applications

17 Prior Art Citation – Tip 2 Cite Relevant Prior Publications - Articles in U.S. + elsewhere - Sales brochures anywhere in world - Internet sites

18 Prior Art Citation – Tip 3 Disclose Prior “ON SALE” Efforts to USPTO - In U.S. only - Need only be offer for sale – verbal description enough - Means ready for patenting - More than one year before actual U.S. filing date -not Korean filing date- see 35 U.S.C. §119

19 Prior Art Citation – Tip 3 Cite Inventive Contributions of Others to USPTO - Materials received from Joint venture companies (but watch out for confidential information) - Ideas received from other individuals, especially if outside of company

20 Prior Art Citation - Tip 4 How to Avoid a Finding of “BAD INTENT” - Establish an IDS program and follow the same - Set up Internal company guidelines

21 No patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.-in the USPTO Duty of candor and good faith is broader than the duty to disclose material information.-in courts Duty of Disclosure and Duty Of Candor

22 Rules Concerning Duty of Disclosure 37 C.F.R – Defines Duty and who has duty 37 C.F.R Defines timing for submitting information 37 C.F.R – Defines content of the information 37 C.F.R – Defines duty after allowance 37 C.F.R – Defines duty for Reexamination 37 C.F.R (b) & 1.607(c) – Define duty for copying claims

23 The IDS Trilogy What is the duty of disclosure, and who has the duty – 37 C.F.R Time requirements for filing information, especially material information – 37 C.F.R.1.97 Content of information and form of submission – 37 C.F.R. 1.98

24 Rule 56(a) Rule 56 in section (a) defines the public interest as: A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability.

25 Rule 56(a) - Continued Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.

26 Rule 56 - Continued The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim.

27 Rule 56 - Continued The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98.

28 Rule 56(b) – Materiality b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.

29 What is Material Information? “Material Information" includes not only prior art, but any information which is "material to patentability.” Thus, material information includes patents and publications, and information on possible prior public uses, sales, offers to sell, derivation, prior invention by another, inventorship, etc.

30 Sources of Information Prior Art Cited in Related Foreign Applications Information Relating to or From Copending U.S. Patent Applications – Possible Double Patenting Rejection, Material Art, 102(e), Inventorship Issues Information From Related Litigation - prior public use or sales, inventorship, prior art, fraud, inequitable conduct, any assertions different considered by examiner (arises more in reissue and reexamination proceeding).

31 Rule 56(c) – Who Has Duty (c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are: (1) Each inventor named in the application; (2) Each attorney or agent who prepares or prosecutes the application; and (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.

32 Rule 56(e) (e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation- in-part application.

33 Duty Continues Until Application is Patented Duty does not end when application is allowed. Duty does not end with payment of issue fee. Extends until patent is granted on the application.

34 IDS Submitted After Action On Merits -Finality Of Next Office Action - Cited Information Used In New Ground Of Rejection Final Rejection is Appropriate - Information submitted with certification under 37 C.F.R. 1.97(e) and new ground necessitated by amendment can be made final. -Next action where information is submitted with fee under 37 C.F.R. 1.17(p) can be final whether or not the claims have been amended, unless other new ground of rejection (not based on newly submitted information and not necessitated by amendment).

35 Rule 98 - Content of IDS (a) What to include therein (b) How to list (c) How to submit cumulative information (d) Exception to submission of copies when claiming 35 U.S.C. 120 benefit (Continuing applications)

36 Documents Submitted As Part of Reply to Office Action Documents submitted as evidence directed to an issue of patentability raised in an Office action do not require satisfaction of requirements of Rules 97 and 98 in order to be considered by the examiner. Listing on Form PTO-1449 is not necessary – considered as part of record, but does not appear on patent. If listed on Form PTO-1449 must satisfy rules, and will appear on patent.

37 Information Printed On Patent A citation listed on Form PTO-1449 or an equivalent paper, and considered by the examiner will be printed on the patent. After January 1, 2001, citations cited by the examiner on a form PTO-892 will be marked with an asterisk, and those only by applicant will not be marked. If no or incorrect classification information cited by applicant, citation will be printed without classification information.

38 Everyone Must Be Vigilant LGE -Research Department (Inventor’s roups) -Patent Department Korean Associates US Associates Other Foreign Associates

39 Set Up A System For… Inventors to Check Patent Department to Check Korean Law Firm to Check U.S. Law Firm to Check

40 IF NOT …