The U.S. Patent Office is modifying its approach to oaths/declarations. Starting on June 1, 2008, oaths/declarations must acknowledge “a duty to disclose information material to patentability as defined in Rule 1.56.” This serves as yet another example of the importance of understanding Rule 56, advising applicants/clients of their duty, and how to satisfy this duty….
Category: Client Communications
Practical Take Aways Regarding “Associated” Applications In View Of McKesson
In McKesson Information Solutions, Inc., v. Bridge Medical, Inc., No. 06-1517 (Fed. Cir. 2007), the Federal Circuit affirmed a dismissal of an infringement suit after finding that the patent in suit was unenforceable due to inequitable conduct. In doing so, the Federal Circuit reaffirmed that a patent may be rendered unenforceable for inequitable conduct if…
Advising Clients About The Duty Of Candor – Part II
I have received several inquiries for the memorandum referenced in the first form paragraph of my earlier post on this subject. The following is the basic text I start with when drafting the memorandum for a new client. 2006 Memorandum Re: The Duty of Disclosure and Materiality Every applicant for a U.S. patent has a…
Advising Clients About The Duty Of Candor – Part I
This post is a slight departure from previous posts on this blog in that it focuses on communications between prosecutors and clients rather than communications between prosecutors and the U.S. Patent and Trademark Office. The duty of candor that every applicant and patent practitioner owes to the U.S. Patent and Trademark Office (USPTO) has been…