All companies should be aware of the Rule and determine at an early stage how inventors should be educated regarding compliance. Often, companies and their patent counsel train inventors to avoid attempting to perform prior art searches or compare their inventions to “what is out there.” This is prudent for a couple reasons.
Patents, trademarks, and copyrights are commonly known as “intellectual property” or IP. As occasional high-profile lawsuits between large corporations illustrate, IP can be extremely valuable, causing companies to budget significant amounts of money to acquire, defend, and assert IP rights. The concept of IP can be controversial, prompting various constituencies to condemn the entire idea (e.g., as dampening innovation or hampering individuals and smaller entities), or to object to the vast sums spent on high-profile lawsuits and their resulting awards/settlement.
Many clients ask this question no matter how many patents they already hold. Even for inside counsel at large companies or serial inventors who have been through the patent process end-to-end multiple times, the production timelines of the U.S. Patent and Trademark Office (USPTO) are ever evolving.
Everyone who participates in filing and prosecuting a patent application encounters the Duty of Disclosure, whether you be an inventor, a technology group manager, inside intellectual property (IP) counsel, or inside litigation counsel (hopefully this is not your first encounter!). Most of the information here is pretty basic, but it is worth a revisit from time-to-time. Also, there are some proposed new procedures in the U.S. Patent Office that promise to make complying a little less worrisome and a little less expensive.