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One of the most rewarding aspects of a patent law practice is working with inventors. The practitioner has the opportunity to collaborate with creative researchers who are leaders in their fields, and to contribute legal expertise to protect hard-won research advances. But working with inventors also presents challenges. One such challenge is the task of explaining complex aspects of patent law to inventors, many of whom have little familiarity with the patent system. DUTY OF CANDOR Among the patent law concepts inventors must contend with is the patent applicant’s duty of candor to the U.S. Patent and Trademark Office (USPTO). The duty of candor includes, but is not limited to, a duty to disclose to the USPTO all information known to the inventor to be material to the patentability of the claims in the inventor’s patent application. While inventors typically observe standards of scientific ethics within their disciplines, many inventors are not aware of the stringent requirements of the duty of candor. And inventors with foreign patenting experience may be particularly surprised to learn of their disclosure obligations under U.S. law, because patent applicants in many countries have no such obligation. The consequences of failing to submit material information to the USPTO can be severe. Furthermore, since every inventor has an obligation under the law to satisfy the duty of candor, inventors cannot exclusively rely on their patent attorneys or agents to steer clear of trouble. It is important, therefore, for inventors to understand their disclosure obligations, and the potential consequences of failing to meet them. An inventor’s failure to disclose material information may result in a judicial determination that the affected patent is unenforceable for having been procured through the inventor’s “inequitable conduct.” An inequitable conduct finding can also occur when a court concludes that an inventor submitted false material information to the USPTO during the prosecution of a patent application. Inventors should understand that determinations regarding inequitable conduct are made without regard to the merits of the inventions in question, or the amount of effort and resources expended during technical development or patent procurement. Even before any judicial consideration of the issue of inequitable conduct, however, questions about whether an inventor or patent practitioner failed to comply with the applicant’s duty of candor can undermine a patent’s potential and create headaches for the inventor. Uncertainty about a key patent’s enforceability will cloud license negotiations and chill potential business mergers and acquisitions. The inventor under scrutiny may suffer damage to his or her career prospects, potential embarrassment under inquisition at the hands of skilled litigation counsel bent on weakening or destroying the patent, or even ignominious personal mention in a federal judicial opinion explaining an unenforceability ruling. The inventor needs more than an appreciation of the potential implications of violating the duty of candor, however. He or she also needs guidance regarding how, specifically, to carry out his or her candor obligations. Assuming an inventor (or her assignee) is represented by a patent attorney or agent, she is most likely to violate the duty of candor by failing to bring to the attention of the USPTO — personally or via her attorney or agent — materially relevant information of which she is aware regarding the prior art. The USPTO defines material information as that which, alone or in combination with other information, establishes that the claimed invention is not patentable, or which undermines arguments the patent applicant makes during prosecution. WHAT CONSTITUTES PRIOR ART? The prior art, of course, as most inventors will appreciate, includes patents and other publications, such as scientific and technical articles. But an inventor may not realize that other types of publications, such as advertisements and other marketing materials, articles in trade publications, posters displayed at scientific meetings, and information posted on Internet sites, qualify as well. Inventors unfamiliar with the U.S. patent system are even less likely to realize that their disclosure obligations extend to non-print prior art that falls into the categories of “public use” or “on sale” activities under the law, or other prior art provisions of the patent statute. Such activities include trade show demonstrations, meetings with potential customers, and even confidential communications from non-inventor colleagues. Inventors must also understand that the obligation to disclose material prior art to the USPTO includes their (and their assignees’) own relevant patents, publications, and activities, in addition to the prior art created by others. Foreign language publications the inventor can understand must also be disclosed, if they are material and qualify as prior art. The significance of patents as prior art can be particularly confusing. Some inventors who are familiar with the special significance of patent claims assume that only the claims of a patent “count” as prior art, and overlook the potential relevance of the rest of the disclosure. Inventors may also fail to appreciate that a prior art disclosure of a single embodiment or species, even if only recited in a “laundry list” of alternatives in support of a broad claim and never put into practice, is information material to a subsequent attempt to patent a broader invention including that species within its scope, and therefore must be disclosed to the USPTO. Educating inventors about the types of potential prior art is necessary to enable them to fulfill their obligations to disclose information material to the patentability of their claims. But the duty of candor extends beyond the obligation to disclose material prior art. Depending upon the content of the application and the course of prosecution, the inventor’s participation in the patenting process may implicate the duty of candor in other ways, as well. PARTICIPATION IN THE PROCESS For example, any time the inventor’s test data is submitted to support patentability, whether included in the application or submitted after the application is filed, data in the inventor’s possession that tends to undermine the favorable significance of the data submitted must be submitted as well, if material. Aside from submitting experimental data to the USPTO, inventors also sometimes submit sworn statements for other purposes, such as to testify regarding the level of ordinary skill in the relevant art, the commercial success enjoyed by the invention, or whether a prior art or application disclosure is enabling. These statements must be candid and complete so as not to mislead the patent examiner. Inventors who are not also patent law experts cannot be expected to evaluate close questions of what lies in the prior art, nor can they be expected to be familiar with the nuances of claim scope or appreciate the subtleties of materiality. An inventor represented by a patent attorney or agent must rely on his representative to make informed judgments about these and other issues relating to the duty of candor. But the practitioner who fails to explain the duty of candor and all of its ramifications to his inventors disserves his clients. As is the case in many other situations, ignorance of the law in this regard is no excuse. Lisa A. Dolak is a registered patent attorney, associate professor at Syracuse University College of Law, and of counsel to Nixon Peabody LLP.

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