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July 25, 2012


I can see where it does not make any sense to require an applicant to file an IDS for any SUCCESSFUL third party submission as the information would of necessity already be with the Office in the official record.

But what if an attempt is UNsusccessful? Is the duty to disclose now triggered given that the Office has decided to inform the applicant of an UNsuccessful attempt at submitting art?

Let's say a third party submission is on point concerning a critical aspect of non-patentablity, but is rejected as not beign consice enough. The third party submission is made just within the time limts, so the rejection prevents the third party from re-submitting. The Office notifies the applicant of the submission. Is the duty of the applicant invoked? What if the applicant has a no-look-at-anything-not-officially-in-the-record policy (similar to many policies rejecting uninvited invention suggestions)? This would not be an unreasonable policy to have. What then? WIll the Office policy of notification serve as a de facto "awareness" that invokes the need to file an IDS?

I would expect that if the Office notifies the applicant of the submission that effectively, duty has been invoked. If the Office just stuck the papers in the file and didn't notify the applicant, it might be different, but I don't see how applicant could maintain they didn't know about it if they actually receive a notice. Hopefully this won't become a mechanism for anti-patent activists or creative competitors to harass applicants.

Skeptical: The Office will only notify the applicant about compliant third party submissions, so that's not a scenario you have to worry about. It seems to me that evaluation for compliance is a formalities issue, and doesn't need to be done by the examiner, so that the examiner may likewise remain unaware of the reference.

I've long thought, however, that you could simply mail the reference to the applicant and/or or his or her attorney, thereby triggering the duty to disclose, while avoiding the fees and deadlines.


I guess my question runs to the concept of "notice," and what an applicant is required to do with a communication that is not officially a part of prosecution.

Just because the Office is the one sending the notice does not make that notice an official action precisly because that notice is not a part of the official record.

A colorable argument can be made that unsolicited mail, as a policy, is not reviewed. I provided a similar example in the way of unsolicited invention ideas. Corporations protect themselves from small (and not necessarily unscrupulous) entities by having just such a "we don't look" policy. No one makes the argument (at least successfully) that the large corporation has "notice" because the mailer of the unsolicited item can prove that the item was sent.

The "harassment" angle is a different and separate argument.

Thanks James, I think you are correct in that I misread the article.

However, my thoughts would still apply to your "simply mail the reference to the applicant" idea.

Perhaps consider this scenario. You have an attorney (perhaps one that has not filed a PCT or other application for you) mail the references to the inventor and the inventor/assignees' counsel, with a letter explaining that at least one reference is believed to be material to patentability of at least one claim of application X. How does that not provide you with evidence that can be used in an inequitable conduct defense, at least with regard to the intent prong?


Your example also falls to my hypothetical.

Just as corporations have policies against accepting/opening/having-notice of independent inventors idea submissions to protect themselves from people later claiming that the corporations "stole" their idea, ANY unsolicited information from third parties can be similarly screened. There is NO intent if the information is screened in such a blanket matter.

Ah, yes. That's why I said to send it to the inventors. At their home address.

Inventors take note.

Moondog: for shame. I certainly hope that you are not an actual attorney.

Avoid this unethical trap (it is unethical if you know someone has representation and you deal directly with the inventor bypassing that legal representative) by not opening and returning to sender with a note that any correspondence must be delivered to your legal representative any such documentation received at your personal address. Also consider asking your counsel to consider filing an ethics grievance with the USPTO Office of Enrollment and Discipline.


I would also point out that you did not say "send it to the inventors," but rather you said "send it to the inventors' counsel."

If you want to engage in trolling and moving of goalposts, please go to Patently-O.

Moondog, my apologies for missing the "inventor and" in your post.

Mea Culpa (but still watch for ethical violations, you are not at liberty to bypass counsel, especially if your intention is to "trick" someone).

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