USPTO and Practitioners Discuss Disclosures from Similar Applications

During a recent AIPLA-sponsored discussion at the USPTO, patent practitioners met with heads of various Technology Centers to discuss USPTO caseloads and recent events. One of the more interesting topics was the increasing number of disclosures from applicants in light of McKesson and more recent inequitable conduct cases and measures that may be taken by the USPTO and practitioners in response.

In McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 2006-1517 (Fed. Cir. 2006) the Court of Appeals for the Federal Circuit affirmed a district court’s finding of inequitable conduct for failure to disclose materials to the USPTO in violation of an applicant’s duty of disclosure under 37 C.F.R. 1.56. In that case, the patent attorney handled two similar, yet unrelated, pending patent applications before the USPTO and did not disclose in connection with one patent application certain documents, such as an office action and a prior art reference, cited in the other similar patent application.

In view of McKesson, patent practitioners may give additional consideration to disclosing office actions and references between related patent applications as well as office actions and references found in unrelated, yet similar patent applications. As the number of related applications and similar patent applications grows, the disclosure process may become more challenging due to the number of documents to cite and the timing of disclosure. For example, if, after a patent application has been allowed, an office action appears in a related or similar patent application, then the applicant may file an Information Disclosure Statement (IDS) disclosing the office action and along with a mandatory and costly payment for a Request for Continued Examination (RCE) to reopen prosecution of the allowed patent application so that the Examiner may review the office action and references cited therein.

During the discussion at the USPTO, the participants considered options such as a special “After-allowance RCE” of reduced price that would pay for the Examiner to review references disclosed by the applicant in the situation described above. Also of note was a suggestion that a feature be implemented within the USPTO’s electronic database that would allow applicants to link applications to allow office actions and references to be automatically disclosed between applications. This issue is on the USPTO’s radar, so stay tuned for developments.