Patent Law

Debra Anderson recently published her checklist for ensuring that the PTO is notified of all relevant prior art and public uses of an invention. What is on your checklist?

1. Remind your client of the duty to disclose relevant prior art, including related copending applications (and make sure to file this prior art with the United States Patent and Trademark Office).
2. Make sure that the examiner at the patent office is aware of activity in related cases, if handled by other examiners.
3. Ask [inventors and in-house attorneys] about attendance at conferences [including notes taken], posters, and abstracts submitted to journals.
4. Remember to file prior art uncovered in foreign searches.
5. Ask about offers for sale or other public disclosures through use or publication.
6. If you are filing a declaration, make certain that it is clear to the PTO where the interests of the declarant lie. Do not conceal from the PTO facts known to you that are adverse to your client’s position (such as negative data), in order to advance your client’s case.
7. Discuss the date of invention and related evidence with your client.

Notes:

• Bracketed portions are my edits.
• Read the whole article in IP Today.