The Duty of Candor and Why You Should Comply
I'm Rich Beem. I'm a patent attorney in Chicago and I would like to talk with you about the duty of candor. When you file a patent application in the US Patent and Trademark Office, or perhaps you have had us prepare and file the patent application for you, there is a duty of candor and it applies to you and your patent attorney and everyone involved in the process.
What the duty of candor is, is a requirement that any information you're aware of that might be important to the examiner in deciding whether to issue you a patent, that information to be disclosed to the patent office. And we do it in a specific form. We do it in something that's called an information disclosure statement. In short we call that an IDS. And if there's any patents that you know of, if there's any patents that we know of because we have found them in a search, if there is any product that's already out on the market, it might be your own product. Maybe you sold a prototype two years ago and it didn't work very well, and then you came along with a better way of doing it and that's what in this patent application.
Well that prototype that you sold two years ago, that has to be disclosed to the patent office and it's very important to do that. You want the examiner to know all the information. You want them to make a good decision. Why? Because you want to get a good, valid, strong patent that will hold up in court if it is challenged, and the only way that it will hold up is if you come clean and disclose all the information to patent office up front. It preferably should be done within three months of the filing date of the patent application. But the duty of candor is continuing. It continues all the way up until the date when the patent issues.
We sometimes have situations where we find out about prior art that we learn about from another patent office. Maybe we filed another patent application for you in Europe and an European examiner tells us about a prior art reference. And we find out about it maybe just a month before the issue date of your patent application. We still disclose it to the patent office, and there are special procedures if it's late in the game. But we want to make sure that the patent office knows about it and you want to make sure that the patent office knows about it.
Would you like to have a patent application filed on your invention? Would you like to disclose the information that you're aware of to the patent office? If so, we can help you. That's what we do every day. Call us. Our phone number is 312-201-0011. Thank you for joining me.
