Patent It Yourself - PDF Archive

288 | PATENT IT YOURSELF
The PTO considers that information is material to
patentability when it is not cumulative to information
already of record or being made of record in the application,
and (a) it establishes, by itself or in combination with
other information, a prima facie (on first sight) case of
unpatentability of a claim; or (b) 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.
A prima facie case of unpatentability is established
when the information compels a conclusion that a claim
is unpatentable under the preponderance of evidence
burden-of-proof standard, giving each term in the claim
its broadest reasonable construction consistent with the
specification. This is done before any consideration is
given to evidence which may be submitted in an attempt to
establish a contrary conclusion of patentability.
As mentioned, you can send the IDS with your application
instead of taking advantage of the three-month grace
period. In this event, the names of the inventors and title
of your invention are the only information you need to
put at the top of Form 10-5. Don’t fill out the Certificate of
Mailing at the bottom of the form. If you send it after your
application is filed, you’ll know the serial number, filing
date, and group art unit, and can insert them. Also, you
should fill out the Certificate of Mailing at the bottom of
the form.
The blanks in Forms 10-5 and 10-6 are self-explanatory.
Information about the Art Unit (requested in the
upper right-hand corner of Form 10-6) is on your filing
receipt. Before each patent number in the Foreign Patent
Documents section, you may use a two-letter international
country code, as indicated. The most common county
codes are FR (France), JP (Japan), CN (China), GB (United
Kingdom), CA (Canada), EP (Europe), and DE (Germany).
In the right-hand column, headed “Pages, Columns …,”
you can list any places in the document that you feel are
particularly relevant, but this is optional since the pertinent
rules (Rules 97 and 98) require that you merely cite the
documents.
If you include any non–English-language reference on
Form 10-6, Rule 98(a)(3) requires that you also provide a
concise explanation of its relevance on a separate paper
or in the specification. I recommend that you also state
how your invention, as claimed, differs physically from
this reference(s). State the relevance of any non-English
references, and any discussion as to how your invention
differs, on Form 10-5. Fig. 10O provides an example.
If you send in the IDS with the application, note this
on the postcard and transmittal letter that you send
with your application and don’t fill out the Certificate of
Mailing at the bottom of Form 10-5. If you send it in after
the application is filed, send it with a separate postcard
and fill out the Certificate of Mailing. Again, address the
front of the card to you; the back should read as in Fig.
10N. If you file the application by EFS-Web and include
the IDS, you don’t have to send the PTO a postcard. The
acknowledgment receipt you receive will list the IDS. If you
file by EFS-Web and you’re a registered eFiler (or become
one later), you can file the IDS via EFS-Web after you get
your official filing receipt. If you file by EFS-Web and you’re
not a registered eFiler, you will have to mail the IDS and
cover sheet with a receipt postcard.
If you haven’t followed my instructions in Chapter 6—
that is, you haven’t made a search and are not aware of any
prior art—as stated, you don’t have to file an IDS. The PTO
won’t deny or delay your application if you don’t file an
IDS. However, if they (or an infringer whom you later sue
for patent infringement) discover that you knew of relevant
prior art and didn’t file an IDS, your patent application
or patent can be held invalid for “fraud on the PTO.” This
is so even if the examiner discovers the reference you
withheld and cites it in a regular Office Action. (See Fig.
10A.) In one case, a Dallas patent law firm neglected to
disclose some relevant prior art to the PTO in its client’s
patent application. The client got a patent and sued on it but
because of the cloud the nondisclosed art cast on the patent,
it had to settle the suit for far less than it would have gotten
if the firm had disclosed the prior art to the PTO. The client
then sued the firm and a jury awarded the client $72 million
in damages for the firm’s omission!
Suppose you are aware of information other than prior
art that may be material to patentability—for example
relevant litigation, an assertion by another person claiming
to be an inventor, or a sale of a product embodying the
invention before the filing date (but not before your date
of invention). You have a duty to disclose this information
also. You can do this with a narrative statement on a form
such as Form 10-5. Also, be sure to state why the information
does not negate the patentability of your invention.
Information Disclosure Statement, Form PTO/SB/08
(A and B), and [insert number] References in patent
application of [insert name(s) of inventor(s)], Serial No.
, Filed
received for filing today:
Fig. 10N—Back of Postcard for Sending IDS After Filing