Five Common Mistakes of Patent Prosecution from the Enforcement Perspective (Part 4)

Mistake #4: IDS

The fourth typical mistake is that the applicant of one application fails to bring an office action and/or cited prior art in a co-pending application to the first Examiner.

Examples
• Applicant files App. A and App. B, both of which share a similar specification. Examiner A issues an office action in App. A, citing several prior art. Applicant fails to bring this office action (and its cited art) to Examiner B who examines App. B.

Consequence
• This may lead to inequitable conduct, which could render the patent unenforceable.

Case Study

In McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007), the Federal Circuit affirmed the district court’s finding of inequitable conduct due to the patent applicant’s nondisclosure of three items of information during prosecution in a setting where the applicant had co-pending applications, including one before the same examiner and the undisclosed items came from co-pending applications. Id. at 901, 925-26.

The Federal Circuit cautioned that “the MPEP at the time explained that a prosecuting attorney should not ‘assume that [a PTO examiner] retains details of every pending file in his mind when he is reviewing a particular application,’ MPEP § 2001.06(b) (5th ed. rev. 3, 1986).” Id. at 925.

The current MPEP retains the same language.

Solution

If the applicant has co-pending applications that share a similar specification, under McKesson and recent Federal Circuit cases, the applicant should always submit the IDSs to bring office actions and cited prior art from the co-pending applications to the examiner’s attention, even if the same examiner is examining all co-pending applications.

(TO BE CONTINUED)