Avoiding Invention Disclosure Landmines: Why a Prior-Art Search Isn’t Always the Best Answer

Avoiding Invention Disclosure Landmines: Why a Prior-Art Search Isn’t Always the Best Answer

Many inventors do not understand a very basic prerequisite to getting a patent: the duty to fully disclose to the United States Patent and Trademark Office (USPTO) how to make and use the inventor’s invention. The rationale for this requirement is deeply embedded in the U.S. Constitution—through amplifying statutes and case law—the implication of which is this: “You (the inventor) tell us what you know and we (‘the people,’ more specifically, the government) will give you exclusive rights to your invention for a certain duration.”

U.S. Patent and Trademark Office 37 CFR Rule 1.56: How Should Patent Applicants Approach Compliance?

U.S. Patent and Trademark Office 37 CFR Rule 1.56: How Should Patent Applicants Approach Compliance?

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.

The “Property” in Intellectual Property

The “Property” in Intellectual Property

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.