2003 Disclosure - When Made
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An applicant, attorney, or agent who is aware of material prior art or other information and its significance should submit the information early in prosecution, e.g., before the first Office action, and not wait until after allowance.
- Potentially material information discovered late in the prosecution should be promptly submitted.
- That the issue fee has been paid is no reason or excuse for failing to submit information.
- Additionally, applicant should be mindful of the incentives of prompt filing of information.
The presumption of validity is generally strong when prior art was before and considered by the Office and weak when it was not.
2003.01 Disclosure After Patent Is Granted
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I. BY CITATIONS OF PRIOR ART AND WRITTEN STATEMENTS UNDER 37 CFR 1.501
Where a patentee or any member of the public (including private persons, corporate entities, and government agencies) has certain information which they desire to have made of record in the patent file, they may file a citation of such information with the Office.
II. BY EX PARTE REEXAMINATION
Where any person, including patentee, has prior art patents and/or printed publications which the person desires to have the U.S. Patent and Trademark Office consider after a patent has issued, such person may file a request for ex partereexamination of the patent
III. BY SUPPLEMENTAL EXAMINATIONWhere a patent owner desires that the Office consider, reconsider, or correct information believed to be relevant to the patent, the patent owner may file a request for supplemental examination.
Unlike ex parte reexamination practice, the information that the patent owner may request to be considered, reconsidered, or corrected in a supplemental examination proceeding is not limited to patents, printed publications, and patent owner written statements.
The "information" may include any information that the patent owner believes to be relevant to the patent.
- For example, the information may include not only a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording.
In addition, the information submitted as part of a request for supplemental examination may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, and indefiniteness.
