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The provisions of 37 CFR 1.97 specify when an information disclosure statement will be considered as a matter of right and when a certification must be made and/or fee submitted in order to have the information disclosure statement considered. In any circumstance, information should be submitted promptly.
An applicant, attorney, or agent who is aware of material prior art or other information and its significance should submit the information as early as possible in prosecution, e.g., before the first Office action, and not wait until after allowance. However, potentially material information discovered late in the prosecution should be promptly submitted. That the issue fee has been paid is no reason or excuse for failing to submit information. See MPEP § 609.04(b). Additionally, applicant should be mindful of the incentives of prompt filing of information as set forth in 37 CFR 1.704(d)(1).
Likewise, material prior art or other information and its significance should be submitted as soon as possible for reissue applications, and reexamination proceedings.
The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not. See Bolkcom v. Carborundum Co., 523 F.2d 492, 498, 186 USPQ 466, 471 (6th Cir. 1975).
Where a patentee or any member of the public (including private persons, corporate entities, and government agencies) has certain information which they desire to have made of record in the patent file, they may file a citation of such information with the Office pursuant to 35 U.S.C. 301 and 37 CFR 1.501. Such citations will be entered in the patent file without comment by the Office. Information which may be filed under 37 CFR 1.501 is limited to prior art patents, printed publications or written statements of the patent owner filed by the patent owner in a proceeding before a federal court or the Office in which the patent owner took a position on the scope of any patent claim. Any citations which include items other than those items expressly enumerated in 37 CFR 1.501 will not be entered in the patent file. See MPEP § 2202 through § 2208.
Where any person, including patentee, has prior art patents and/or printed publications which the person desires to have the U.S. Patent and Trademark Office consider after a patent has issued, such person may file a request for ex parte reexamination of the patent (see 37 CFR 1.510 and MPEP § 2209 through § 2220). Patent owners or third party requesters may bring information, including prior art and incorrect or inconsistent positions, to the attention of the USPTO through ex parte reexamination.
Where a patent owner desires that the Office consider, reconsider, or correct information, including prior art and incorrect or inconsistent positions, believed to be relevant to the patent, the patent owner may file a request for supplemental examination. See 37 CFR 1.601 -1.625 and MPEP Chapter 2800. Supplemental examination became available on September 16, 2012, as a result of section 257 of Title 35, United States Code, which was added by Public Law 112-29, enacted on September 16, 2011, known as the Leahy-Smith America Invents Act (AIA). In particular, 35 U.S.C. 257(c)(1) states that "[a] patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent." Therefore, a patent owner may insulate the patent from being held unenforceable based on information submitted in a properly filed supplemental examination request.
Unlike ex parte reexamination practice, the information that the patent owner may request to be considered, reconsidered, or corrected in a supplemental examination proceeding is not limited to patents, printed publications, and patent owner written statements under 35 U.S.C. 301. The "information" may include any information that the patent owner believes to be relevant to the patent. For example, the information may include not only a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording. In addition, the information submitted as part of a request for supplemental examination may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, and indefiniteness.
Patent owners may bring information, including prior art and incorrect or inconsistent positions, to the attention of the USPTO through reissue applications. If any reviewed document is material to the patentability (i.e., those submitted to another Government entity) of a pending matter before the Office, such as reissue application, there is a duty to submit the information to the USPTO. 37 CFR 1.56 and 11.18(b)(2). See MPEP § 2015.
While it is not appropriate to attempt to set forth procedures by which attorneys, agents, and other individuals may ensure compliance with the duty of disclosure, the items listed below are offered as examples of possible procedures which could help avoid problems with the duty of disclosure. Though compliance with these procedures may not be required, they are presented as helpful suggestions or best practices to avoid duty of disclosure problems.
1. Many attorneys, both corporate and private, are using letters and questionnaires for applicants and others involved with the filing and prosecution of the application and checklists for themselves and applicants to ensure compliance with the duty of disclosure. The letter generally explains the duty of disclosure and what it means to the inventor and assignee. The questionnaire asks the inventor and assignee questions about:
__ the origin of the invention and its point of departure from what was previously known and in the prior art,
__ possible public uses and sales (See GS Cleantech Corp. v. Adkins Energy LLC, 951 F.3d 1310, 2020 USPQ2d 10092 (Fed. Cir. 2020)),
__ prior publication, knowledge, patents, foreign patents, etc.
The checklist is used by the attorney to ensure that the applicant has been informed of the duty of disclosure and that the attorney has inquired of and cited material prior art.
The use of these types of aids would appear to be most helpful, though not required, in identifying prior art and may well help the attorney and the client avoid or more easily explain a potentially embarrassing and harmful "fraud" allegation.
2. It is desirable to ask questions about inventorship. Who is the proper inventor? Are there disputes or possible disputes about inventorship? If there are questions, call them to the attention of the U.S. Patent and Trademark Office.
3. It is desirable to ask questions of the inventor about the disclosure of the best mode. Make sure that the best mode is described. See MPEP §§ 2165 - 2165.04.
4. It is desirable for an attorney or agent to make certain that the inventor, especially a foreign inventor, recognizes his or her responsibilities in signing the oath or declaration. See 37 CFR 1.69(a).
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Note MPEP § 602.06 for a more detailed discussion.
5. It is desirable for an attorney or agent to carefully evaluate and explain to the applicant and others involved the scope of the claims, particularly the broadest claims. Ask specific questions about possible prior art which might be material in reference to the broadest claim or claims. There is some tendency to mistakenly evaluate prior art in the light of the gist of what is regarded as the invention or narrower interpretations of the claims, rather than measuring the art against the broadest claim with all of its reasonable interpretations. It is desirable to pick out the broadest claim or claims and measure the materiality of prior art against a reasonably broad interpretation of these claims.
6. It may be useful to evaluate the materiality of prior art or other information from the viewpoint of whether it is the closest prior art or other information. This will tend to put the prior art or other information in better perspective. See Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1374, 54 USPQ2d 1001, 1005 (Fed. Cir. 2000) ("A withheld reference may be highly material when it discloses a more complete combination of relevant features, even if those features are before the patent examiner in other references." (citations omitted)). However, 37 CFR 1.56 may still require the submission of prior art or other information which is not as close as that of record.
7. Care should be taken to see that prior art or other information cited in a specification or in an information disclosure statement is properly described and that the information is not incorrectly or incompletely characterized. See Apotex v. UCB, Inc., 763 F.3d 1354, 1361-62, 112 USPQ2d 1081, 1087-88 (Fed. Cir. 2014)(finding that the patent specification omitted material information was among the facts that supported a conclusion that the patent is unenforceable due to inequitable conduct). It is particularly important for an attorney or agent to review, before filing, an application which was prepared by someone else, e.g., a foreign applicant or practitioner. It is also important that an attorney or agent make sure that foreign clients, including foreign applicants, attorneys, and agents understand the requirements of the duty of disclosure, and that the U.S. attorney or agent review any information disclosure statements or citations to ensure that compliance with 37 CFR 1.56 is present. See Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 54 USPQ2d 1001 (Fed. Cir. 2000). In this case, during prosecution the patentee submitted an untranslated 29-page Japanese reference as well as a concise explanation of its relevance and an existing one-page partial English translation, both of which were directed to less material portions of the reference. The untranslated portions of the Japanese reference "contained a more complete combination of the elements claimed [in the patent] than anything else before the PTO." 204 F.3d at 1374, 54 USPQ2d at 1005. The patentee, whose native language was Japanese, was held to have understood the materiality of the reference. "The duty of candor does not require that the applicant translate every foreign reference, but only that the applicant refrain from submitting partial translations and concise explanations that it knows will misdirect the examiner’s attention from the reference’s relevant teaching." 204 F.3d at 1378, 54 USPQ2d at 1008. See also Gemveto Jewelry Co. v. Lambert Bros., Inc., 542 F. Supp. 933, 216 USPQ 976 (S.D.N.Y. 1982) wherein a patent was held invalid or unenforceable because patentee’s foreign counsel did not disclose to patentee’s United States counsel or to the Office prior art cited by the Dutch Patent Office in connection with the patentee’s corresponding Dutch application. The court stated, 542 F. Supp. at 943, 216 USPQ at 985:
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; a double standard of accountability would allow foreign attorneys and their clients to escape responsibility for fraud or inequitable conduct merely by withholding from the local correspondent information unfavorable to patentability and claiming ignorance of United States disclosure requirements.
8. Care should be taken to see that inaccurate statements, inaccurate evidence or inaccurate experiments are not introduced into the record, either inadvertently or intentionally. For example, stating that an experiment "was run" or "was conducted" when, in fact, the experiment was not run or conducted is a misrepresentation of the facts. See Apotex v. UCB, Inc., 763 F.3d 1359, 112 USPQ2d 1085 (Fed. Cir. 2014). No results should be represented as actual results unless they have actually been achieved. Paper or prophetic examples should not be described using the past tense. Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1367, 66 USPQ2d 1385, 1394 (Fed. Cir. 2003); see also MPEP § 608.01(p), subsection II and § 707.07(l). Also, misrepresentations can occur when experiments which were run or conducted are inaccurately reported in the specification, e.g., an experiment is changed by leaving out one or more ingredients. See Steierman v. Connelly, 192 USPQ 433 (Bd. Pat. Int. 1975); 192 USPQ 446 (Bd. Pat. Int. 1976). Misrepresentations can also occur in declarations submitted to the Office. See Intellect Wireless v. HTC Corp., 732 F. 3d 1339, 1342, 108 USPQ2d 1563, 1565 (Fed. Cir. 2013) wherein applicants submitted a declaration under 37 CFR 1.131 containing false statements regarding reduction to practice of the claimed invention.
When drafting a patent application, it is a best practice to take care to ensure the proper tense is employed to describe experiments and test results so readers can readily distinguish between actual results and predicted results. Any ambiguities should be resolved so a person having ordinary skill in the art reading the disclosure, including those who may not have the level of skill of the inventor, can rely on the disclosure as an accurate description of experiments that support the patent claim coverage. It is a best practice to label examples as prophetic or otherwise separate them from working examples to avoid ambiguities. Such presentation will help a reader easily distinguish prophetic examples from working examples with actual experimental results and will enhance the public’s ability to rely on the patent disclosure. See Properly Presenting Prophetic and Working Examples in a Patent Application, 86 Fed. Reg. 35074, 5 (July 1, 2021).
9. Do not rely on the examiner of a particular application to be aware of other applications belonging to the same applicant or assignee. It is desirable to call such applications to the attention of the examiner even if there is only a question that they might be "material to patentability" of the application the examiner is considering. See Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003) (contrary decision of another examiner reviewing substantially similar claims is ‘material’; copending application may be ‘material’ even though it cannot result in a shorter patent term, when it could affect the rights of the patentee to assign the issued patents). It is desirable to be particularly careful that prior art or other information in one application is cited to the examiner in other applications to which it would be material. Do not assume that an examiner will necessarily remember, when examining a particular application, other applications which the examiner is examining, or has examined. A "lapse on the part of the examiner does not excuse the applicant."KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1576, 228 USPQ 32, 35 (Fed. Cir. 1985); see also MPEP § 2001.06(b).
10. When in doubt, it is desirable and safest to submit information. Even though the attorney, agent, or applicant does not consider it necessarily material, someone else may see it differently and embarrassing questions can be avoided. The court in U.S. Industries v. Norton Co., 210 USPQ 94, 107 (N.D. N.Y. 1980) stated "[i]n short, the question of relevancy in close cases, should be left to the examiner and not the applicant." See also LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992).
11. It is desirable to submit material information about prior uses and sales even if it appears that they may have been experimental, not involve the specifically claimed invention, or not encompass a completed invention. See TransWeb v. 3M, 812 F.3d 1295, 1300, 117 USPQ2d 1617, 1619-20 (Fed. Cir. 2016). See also Hycor Corp. v. The Schlueter Co., 740 F.2d 1529, 1534-37, 222 USPQ 553, 557-59 (Fed. Cir. 1984), LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992), and GS Cleantech Corp. v. Adkins Energy LLC, 951 F.3d 1310, 2020 USPQ2d 10092 (Fed. Cir. 2020).
12. Submit information promptly. An applicant, attorney, or agent who is aware of prior art or other information and its significance should submit the same early in prosecution, e.g., before the first action by the examiner, and not wait until after allowance. Potentially material information discovered late in the prosecution should be immediately submitted. That the issue fee has been paid is no reason or excuse for failing to submit information. See Elmwood Liquid Products, Inc. v. Singleton Packing Corp., 328 F. Supp. 974, 170 USPQ 398 (M.D. Fla. 1971).
13. It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
14. Watch out for continuation-in-part (CIP) applications where intervening material information or documents may exist; particularly watch out for foreign patents and publications related to the parent application and dated more than 1 year before the filing date of the CIP. These and other intervening documents may be material information. See In re Ruscetta, 255 F.2d 687, 690-91, 118 USPQ 101, 104 (CCPA 1958); In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972); Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295 (D. Del. 1972).
15. Watch out for information that might be deemed to be prior art under pre-AIA 35 U.S.C. 102(f) and (g).
Prior art under pre-AIA 35 U.S.C. 102(f) may be available under pre-AIA 35 U.S.C. 103. See OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1401, 43 USPQ2d 1641, 1644 (Fed. Cir. 1997)(35 U.S.C. "102(f) is a prior art provision for purposes of § 103"); Dale Electronics v. R.C.L. Electronics, 488 F.2d 382, 386, 180 USPQ 225, 227 (1st. Cir. 1973); and Ex parte Andresen, 212 USPQ 100, 102 (Bd. App. 1981).
Note also that evidence of prior invention under pre-AIA 35 U.S.C. 102(g) may be available under pre-AIA 35 U.S.C. 103, such as in In re Bass, 474 F.2d 1276, 177 USPQ 178 (CCPA 1973). In addition, the AIA provides that the provisions of pre-AIA 35 U.S.C. 102(g) apply to each claim of an AIA application for patent if the patent application: (1) contains or contained at any time a claim to a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time a claim to a claimed invention that has an effective filing date before March 16, 2013.
Note pre-AIA 35 U.S.C. 103(c) disqualifies pre-AIA 35 U.S.C. 102(f) /103 or 102(g) /103 prior art which was, at the time the second invention was made, owned by or subject to an obligation of assignment to, the person who owned the first invention. Further note that pre-AIA 35 U.S.C. 103(c) disqualifies pre-AIA 35 U.S.C. 102(e)/103 prior art for applications filed on or after November 29, 1999. See MPEP §§ 2146 - 2146.02.
16. Watch out for information picked up or disclosed by the inventors and others at conventions, plant visits, in-house reviews, etc. See, for example, Dale Electronics v. R.C.L. Electronics, 488 F.2d 382, 386-87, 180 USPQ 225, 228 (1st Cir. 1973).
17. Make sure that all of the individuals who are subject to the duty of disclosure, such as spelled out in 37 CFR 1.56, are informed of and fulfill their duty.
18. If information was specifically considered and discarded as not material, this fact might be recorded in an attorney’s file or applicant’s file, including the reason for discarding it. If judgment might have been bad or something might have been overlooked inadvertently, a note made at the time of evaluation might be an invaluable aid in explaining that the mistake was honest and excusable. Though such records are not required, they could be helpful in recalling and explaining actions in the event of a question of "fraud" or "inequitable conduct" raised at a later time.
19. Finally, where relevant documentation is submitted to a regulatory review body, such as the Food & Drug Administration (FDA), and is material to a pending patent application, such documentation should be submitted for examiner review. While the considerations made by the FDA for approving clinical trials are different from those made by the USPTO in determining whether a claim is patentable, submissions, particularly opposing arguments, may be material to ongoing patent prosecution. Belcher Pharmaceuticals, LLC v. Hospira, Inc., 11 F.4th 1345, 1353-54, 2021 USPQ2d 909 (Fed. Cir. 2021).
Under 37 CFR 1.56, each individual associated with the filing and prosecution of a patent application has a duty to disclose on their own initiative information material to patentability under 37 CFR 1.56. By contrast, under 37 CFR 1.105, an examiner or other Office employee is authorized to require, from parties identified in 37 CFR 1.56, information reasonably necessary to examine or treat a matter in an application. The provisions of 37 CFR 1.105 are detailed in MPEP § 704.10 - MPEP § 704.14 et seq. The criteria for requiring information under 37 CFR 1.56, i.e., materiality to the patentability of claimed subject matter, is substantially higher than the criteria for requiring information under 37 CFR 1.105, i.e., reasonable necessity to the examination of the application. See, e.g., Star Fruits S.N.C. v. United States, 61393 F.3d 1277, 1282, 73 USPQ2d 1409, 1413 (Fed. Cir. 2005) ("We think it clear that ‘such information as may be reasonably necessary to properly examine or treat the matter,’ 37 C.F.R. 1.105(a)(1), contemplates information relevant to examination either procedurally or substantively. It includes a zone of information beyond that defined by section 1.56 as material to patentability, and beyond that which is directly useful to support a rejection or conclusively decide the issue of patentability."). See also Hyatt v. USPTO, 797 F.3d 1374, 116 USPQ2d 1331 (Fed. Cir. 2015). Information required by the examiner pursuant to 37 CFR 1.105 would not necessarily be considered material to patentability in itself, but would be necessary to obtain a complete record from which a determination of patentability will be made.
Therefore, when an examiner has a reasonable basis to conclude that an individual identified under 37 CFR 1.56(c) or any assignee has information that would aid in the examination of the application or treatment of some matter, the examiner may require additional information. This requirement could include statements made or information submitted to other Government agencies such as the FDA. For example, when examining a claim directed to a process of manufacturing a particular drug product that was effectively filed more than one year after FDA approval of the drug product, an examiner may appropriately require an applicant to submit to the USPTO information submitted to the FDA (e.g., in a New Drug Application or Biologics License Application) on how the drug product was manufactured.
It is the courts and not the Office that are in the best position to fashion an equitable remedy to fit the precise facts in those cases where inequitable conduct is established. Furthermore, inequitable conduct is not set by statute as a criteria for patentability but rather is a judicial application of the doctrine of unclean hands which is appropriate to be handled by the courts rather than by an administrative body. Because of the lack of tools in the Office to deal with this issue and because of its sensitive nature and potential impact on a patent, examiner determinations generally will not deter subsequent litigation of the same issue in the courts on appeal or in separate litigation. In addition, examiner determinations would significantly add to the expense and time involved in obtaining a patent with little or no benefit to the patent owner or any other parties with an interest.
Accordingly, the examiner does not investigate and reject original or reissue applications under 37 CFR 1.56. Likewise, the examiner will not comment upon duty of disclosure issues which are brought to the attention of the Office except to note, in appropriate circumstances, that such issues are not considered by the examiner during examination of patent applications, or during reexamination proceedings or supplemental examination.
Issues of fraud and/or inequitable conduct in an interference proceeding before the Board may be considered by the Board if there is a showing of good cause.
In some instances an application may be filed containing an error. For example, an application may be filed with an inventorship error.
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For applications filed on or after September 16, 2012, an inventorship error may be corrected without disclosure of the circumstances of the error. Previously under pre-AIA 35 U.S.C. 116, applicants had to specify that such changes "arose without any deceptive intent". Even though the "deceptive intent" language has been removed from the law, applicants still have a duty to exercise candor and good faith in all dealings with the Office. When an error is discovered, applicant should take steps to ensure that the error is corrected as soon as possible. See MPEP § 602.01 et seq. and MPEP § 602.09 for additional information.
In instances when an applicant submits other information (i.e., errors other than inventorship) to the Office that is incorrectly or incompletely characterized, applicant should:
expressly advise the PTO of [the misrepresentation’s] existence, stating specifically wherein it resides. . . . It does not suffice that one knowing of misrepresentations in an application or in its prosecution merely supplies the examiner with accurate facts without calling his attention to the untrue or misleading assertions sought to be overcome, leaving him to formulate his own conclusions.
See Intellect Wireless v. HTC Corp., 732 F.3d 1339, 1343, 108 USPQ2d 1563, 1565 (Fed. Cir. 2013). Applicants should disclose to the USPTO any information that 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. See 37 CFR 1.56(b)(2).
In order to assure that any correction is fully considered by the examiner, applicants should file the correction "openly", as in filing the correction under separate cover so that the examiner will not be left to determine what is correct. Id. See also Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1572, 220 USPQ 289, 301 (Fed. Cir. 1983). 37 CFR 1.4(c) requires that each distinct subject must be contained in a separate paper to avoid confusion and delay in responding.
[Editor Note: This MPEP section is only applicable to reissue applications filed before September 16, 2012. For reissue applications filed on or after September 16, 2012, the requirement to state that the errors arose "without any deceptive intention" was eliminated consistent with the America Invents Act (AIA) amendments to 35 U.S.C. 251.]
Questions of "fraud," "inequitable conduct," or violation of "duty of disclosure" or "candor and good faith" can arise in reissue applications.
For reissue applications filed prior to September 16, 2012, both pre-AIA 35 U.S.C. 251 and pre-AIA 37 CFR 1.175 require that the reissue oath or declaration must state that the error arose "without any deceptive intention." Further, the examiner should determine whether applicant has averred in the reissue oath or declaration, as required by pre-AIA 37 CFR 1.175(a)(2), (b)(1), and (b)(2), that all "errors" arose "without any deceptive intention." However, the examiner should not normally comment or question as to whether the averred statement as to lack of deceptive intention appears correct or true. See MPEP § 1414.
In re Heany, 1911 C.D. 138, 180 (1911), unequivocally states:
Where such a condition [fraudulent or deceptive intention] is shown to exist the right to reissue the patent is forfeited.
Similarly, the court in In re Clark, 522 F.2d 623, 627, 187 USPQ 209, 213 (CCPA 1975) indicated:
Reissue is not available to rescue a patentee who had presented claims limited to avoid particular prior art and then had failed to disclose that prior art . . . after that failure to disclose has resulted in invalidating of the claims.
It is clear that "fraud" cannot be purged through the reissue process. See conclusions of Law 89 and 91 in Intermountain Research and Eng’g Co. v. Hercules Inc., 171 USPQ 577, 631-32 (C.D. Cal. 1971).
Clearly, where several patents or applications stem from an original application which contained fraudulent claims ultimately allowed, the doctrine of unclean hands bars allowance or enforcement of any of the claims of any of the applications or patents. See Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 245, 19 USPQ 228, 230 (1933); East Chicago Machine Tool Corp. v. Stone Container Corp., 181 USPQ 744, 748 (N.D. Ill.), modified, 185 USPQ 210 (N.D. Ill. 1974). See also Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295 (D.Del. 1972) and Strong v. General Electric Co., 305 F. Supp. 1084, 162 USPQ 141 (N.D. Ga. 1969), aff’d, 434 F.2d 1042, 168 USPQ 8 (5th Cir. 1970), cert. denied, 403 U.S. 906 (1971) where fraud or inequitable conduct affecting only certain claims or only one of related patents was held to affect the other claims or patent. Clearly, "fraud" practiced or attempted in an application which issues as a patent is "fraud" practiced or attempted in connection with any subsequent application to reissue that patent. The reissue application and the patent are inseparable as far as questions of "fraud," "inequitable conduct," or "violation of the duty of disclosure" are concerned. See In re Heany, supra; and Norton v. Curtiss, 433 F.2d 779, 792, 167 USPQ 532, 543 (CCPA 1970), wherein the court stated:
We take this to indicate that any conduct which will prevent the enforcement of a patent after the patent issues should, if discovered earlier, prevent the issuance of the patent.
Clearly, if a reissue patent would not be enforceable after reissue because of "fraud," "inequitable conduct" or "violation of the duty of disclosure" during the prosecution of the patent sought to be reissued, the reissue patent application should not be allowed. Where no investigation is needed to establish such circumstances, an appropriate remedy would be to reject the claims in the reissue application in accordance with 35 U.S.C. 251.
See MPEP § 1448 for information pertaining to the examination of a resissue application when there is an admission or judicial determination of fraud, inequitable conduct or violation of the duty of disclosure.
[Editor Note: This MPEP section is only applicable to reissue applications filed before September 16, 2012. For reissue applications filed on or after September 16, 2012, the requirement to state that the errors arose "without any deceptive intention" was eliminated consistent with the America Invents Act (AIA) amendments to 35 U.S.C. 251.]
The Supreme Court in Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 169 USPQ 513 (1971) set forth the rule that once a patent has been declared invalid via judicial inquiry, a collateral estoppel barrier is created against further litigation involving the patent, unless the patentee-plaintiff can demonstrate "that he did not have" a full and fair chance to litigate the validity of his patent in "the earlier case." See also Ex parte Varga, 189 USPQ 209 (Bd. App. 1973). As stated in Kaiser Industries Corp. v. Jones & Laughlin Steel Corp., 515 F.2d 964, 987, 185 USPQ 343, 362 (3rd Cir. 1975):
In fashioning the rule of Blonder-Tongue, Justice White for a unanimous Court made it clear that a determination of patent invalidity, after a thorough and equitable judicial inquiry, creates a collateral estoppel barrier to further litigation to enforce that patent.
Under pre-AIA 35 U.S.C. 251, the Director can reissue a patent only if there is "error without any deceptive intention." The Director is without authority to reissue a patent when "deceptive intention" was present during prosecution of the parent application. See In re Clark, 522 F.2d 62, 187 USPQ 209 (CCPA 1975) and In re Heany, 1911 C.D. 138, 180 (1911). Thus, the collateral estoppel barrier applies where reissue is sought of a patent which has been held invalid or unenforceable for "fraud" or "violation of duty of disclosure" in procuring of said patent. It was held in In re Kahn, 202 USPQ 772, 773 (Comm’r Pat. 1979):
Therefore, since the Kahn patent was held invalid, inter alia, for "failure to disclose material facts of which * * * [Kahn] was aware" this application may be stricken under 37 CFR 1.56 via the doctrine of collateral estoppel as set forth in Blonder-Tongue, supra.
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The Patent and Trademark Office . . . has found no clear justification for not adhering to the doctrine of collateral estoppel under Blonder-Tongue in this case. Applicant has had his day in court. He appears to have had a full and fair chance to litigate the validity of his patent.
See MPEP § 2259 for collateral estoppel in reexamination proceedings.
37 CFR 1.291 permits protests by the public against pending applications.
Submissions under 37 CFR 1.291 are not limited to prior art documents such as patents and publications, but are intended to include any information, which in the protestor’s opinion, would make or have made the grant of the patent improper (see MPEP § 1901.02). This includes, of course, information indicating the presence of "fraud" or "inequitable conduct" or "violation of the duty of disclosure," which will be entered in the application file, generally without comment on the inequitable conduct issues raised in it.
Protests should be in conformance with 37 CFR 1.291(a) and (b), and include a statement of the alleged facts involved, the point or points to be reviewed, and the action requested. Any briefs or memoranda in support of the petition, and any affidavits, declarations, depositions, exhibits, or other material in support of the alleged facts, should accompany the protest.
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