Do your duty — disclose information to the USPTO during prosecution

Supplemental examination was largely created to reduce the overuse of inequitable conduct charges in patent litigation

The duty to disclose material information to the United States Patent and Trademark Office (USPTO) under 37 C.F.R. § 1.56 is a crucial requirement when prosecuting a patent application. The failure to disclose information can result in a later ruling of inequitable conduct rendering the patent unenforceable. With such high stakes, patent applicants and patent practitioners are often faced with difficult decisions related to the submission of various pieces of information. In this article, the topic of “over-disclosure” is discussed and the recent supplemental examination provision is briefly reviewed.

Over-disclosing information to the USPTO

Contributing Author

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Eric M. Brusca

Eric M. Brusca, Ph.D. is a partner at Marshall, Gerstein and Borun LLP. His practice focuses on biotechnology patent prosecution for a...

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