The Perils of Duty of Disclosure

It is no great secret in the patent community that individuals who file and prosecute patent applications in the United States Patent and Trademark Office (USPTO) have a duty to disclose to the Office all known information material to patentability of the application. It is also no great secret that failure to disclose such information during prosecution of the application may render the resulting patent unenforceable, even if the concealed information does not ultimately render the patent invalid. But what if what is considered as "all known information material to patentability" continues to be redefined in the Court with retroactive effects?

Some of the opinions recently rendered by the Federal Circuit beg for a closer look. InMcKesson Information Solutions, Inc. v. Bridge Medical, Inc.,1 for example, the Federal Circuit affirmed that it may not be sufficient for applicants to merely make examiners aware of related co-pending applications. Rather, applicants are also expected to cross-cite any known information that the examiner is likely to consider as important between related co-pending applications.2 The source of information is boundless and now explicitly includes rejections and notices of allowance.3

However, asking applicants to cross-cite rejections and notices of allowance between related co-pending applications after applicants have disclosed the existence of the related co-pending applications to the Office is superfluous. The Office has access to the file wrappers of all patent applications in the patent system. Tracking transactions in related co-pending applications would be a mere matter of setting up an alert system whereby examiners are timely notified of transactions pertinent to patentability in any desired set of applications. Asking applicants to send to the Office information that the Office already has is unnecessary and is by no means an efficient use of resources.

On the other hand, how do applicants now avoid unintentionally procuring unenforceable patents in light of McKesson Information Solutions, Inc. v. Bridge Medical, Inc.? The answer may seem easy, i.e., cross-cite all known information material to patentability in related co-pending applications. On further thought, this seemingly easy answer would require that applicants or assignees (collectively referred to as applicants) sift through their patent portfolios to determine which co-pending applications are related, where related co-pending applications are not necessarily limited to those related by claim of priority. For these related co-pending applications, applicants would have to cross-cite all known information material to patentability, which as noted above includes rejections and notices of allowance among other documents. As new patent applications are added to the portfolios, applicants would have to reassess the portfolios and provide the relevant cross-citations.

It doesn't take a lot of imagination to see that the logistics of providing exhaustive cross-citations in related co-pending applications will not be easy, particularly for portfolios containing several co-pending applications or a large concentration of co-pending applications in a particular field of invention.

1. McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 487 F.3d 906 (Fed. Cir. 2007).
2. Id. at 923.
3. Id. at 924, 925.