Patent Validity: What you need to tell your patent lawyer

Obtaining a patent is a resource-intensive process. Your patent attorney can advise you on the best course of action to obtain protection of your IP. However, it is in your best interest to provide truthful information to your patent lawyer. Communications with your lawyer are protected as confidential because of the attorney-client privilege.

A patent may be held invalid for a variety of reasons. This is especially relevant if the patent is litigated. Opposing counsel will scrutinize the patent for invalidity issues. It is your patent lawyer’s job to help you avoid these pitfalls. To do so, your patent lawyer must know the facts.  The more upfront you are with your patent lawyer regarding potential issues, the better he can advise you and possibly remedy the situation.

When discussing your invention with your patent attorney, you should be ready to provide:

• All potential inventors, including individuals outside of your business entity
• Any previous patent filings related to the invention
• Publications and uses that are relevant to the invention
• Offers for sale and public use of the product, including the earliest disclosure date
• Any content disclosed outside of a Non-Disclosure Agreement (NDA), including the date of any such disclosures

In the United States, inventors lose the right to obtain a patent if an application is filed more than a year after first public disclosure of the claimed technology. 

Furthermore, there is a duty of disclosure to the U.S. Patent and Trademark Office under 37 C.F.R. . § 1.56. The duty applies to all known information that is material to patentability.  While the duty of disclosure does not require you to perform a search, it does require you to provide information currently in your possession.  A patent may be invalidated if the duty of disclosure is violated.

Applicants are also subject to a duty of candor.  The duty is breached by inequitable conduct, or “affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.”  Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995).  A patent may be invalidated for inequitable conduct.