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IP & Regulatory Law Blog Reflections of a former regulator on FTC and IP issues

Beware Of The IDS Trap

Posted in Patents

Sometimes during the patent process, inventors will perform their own searches of non-patent literature (NPL).  While they are just trying to advance their applications, they may have just incurred a large, unexpected cost.  

Most inventors understand that they have a duty to provide all known, material, non-cumulative prior art to the USPTO during the patent process. In the past, inventors would merely provide copies of NPLs that they found in their own searches to their patent counsel, which, in turn, would disclose such information to the USPTO.  Now, it is not that simple.

There is a wave of concern over the copying and use of such NPLs.  Many firms have adopted policies requiring inventors to have licenses permitting the copying and distribution of such references before they will submit them to the USPTO.  Indeed, just last week, several law firms were sued over this very issue.  While the USPTO has taken the position that copies submitted to the USPTO fall within the ”fair use” exception to copyright infringement, it took no position with regard to copies made for clients or a firm’s internal use. Read a recent discussion of the issue.

So, inventors are left with a dilemma. If they conduct a search that inadvertently reveals 100 potentially relevant references, then they might be faced with being charged a license fee for each reference before this prior art may be submitted to the USPTO as part of the patent process. What’s the downside if they decide to save some money and don’t disclose these references? They could be charged with inequitable conduct and have their patent deemed unenforceable if it’s later determined that these references should have been disclosed to the USPTO.

Here’s the lesson.  Until these lawsuits get cleared up, inventors should be weary of conducting off-the-cuff searches.  If they do, they should be prepared for the additional cost of potential licensing fees.