IEEE Power Electronics Magazine - June 2020 - 72

Patent Reviews

by Art MacCord

Patent Applicant's
Duty of Disclosure

A

n invention must satisfy cer-
tain requirements to be grant-
ed a patent. Among them
are that the invention, as claimed in a
patent application, must not describe
what is known in, or be obvious from,
the prior art. Another important cri-
terion is that the invention must not
have been on sale (which includes
offers that are not accepted) more
than one year before the filing date
of the patent application. What hap-
pens when an applicant knows there
is information about one of these
invalidating events but still wants to
get a patent?
A patent applicant may not hide
that information but must bring it to
the attention of the U.S. Patent and
Trademark Office (USPTO). This
requirement is referred to as the duty
of disclosure and has been part of the
U.S. patent law for decades. The duty
is to disclose information that is
material to the patentability of the
invention. The definition of materiali-
ty has varied through time, but cur-
rently, information is material if a
patent examiner would not allow a
claim if he or she knew about the
omitted facts.
A recent case shows what hap-
pens when the duty is not met. The
invention was a technology for sepa-
rating oil from the waste product of
an ethanol production process. While

Digital Object Identifier 10.1109/MPEL.2020.2984416
Date of current version: 16 June 2020

72

IEEE POWER ELECTRONICS MAGAZINE

technology was commercially suc-
this is not an electronics technology,
cessful because the owners were
the lessons for patent applicants are
granted four U.S. patents and assert-
the same. The inventors worked with
ed some of them against eight differ-
another party to try out the invention,
ent defendants.
yielding a favorable result in June
The facts about the early develop-
2003. Enthusiastic about that out-
ment work in June 2003 and the offer
come, the applicants prepared a
to the potential customer on 1 August
sale proposal for a potential custom-
2003 came to light during the course
er and sent the overture by email on
of discovery for a lawsuit. The ac -
1 August 2003. The customer did not
cused infringers argued that these
accept the offer. In February 2004,
facts showed that
the inventors looked
the invention was on
up the requirements
sale more than one
to get a patent and
The invention, as
year before the filing
learned about the one-
claimed in a patent
date and invalidated
year-on-sale provi-
application, must not
the patents. In the
sion. In May 2004,
describe what is
litigation, the court
they talked to a law-
known in, or be
ruled that the pat-
yer, who reiterated the
obvious from, the
ents were invalid
requirement. The pat-
based on the on-sale
ent application was
prior art.
bar. The court then
filed on 18 August
concluded that the
2003, one year and
inventors and their attorney had com-
17 days after the emailed offer to the
mitted equitable conduct by withhold-
potential customer.
ing that information from the USPTO.
Information about the June 2003
Usually, the effect of an inequita-
test and 1 August 2003 offer to the
ble-conduct finding is that all claims
potential customer was not disclosed
in patents in the same family are
to the USPTO. However, once the
unenforceable-not just the particu-
applicants' attorney came across a
lar claim for which the invalidating
competing patent application, he was
information was withheld. In addi-
given information about the test and
tion, the patent owner and anyone
able to opine (based upon the law as
else found to be participating in ineq-
applicable then) that the test could be
uitable conduct can be liable for the
used to "swear behind" the compet-
attorneys' fees of the accused infring-
ing patent application, i.e., to elimi-
er. Moreover, if the patents obtain -
nate it as prior art. However, none of
ed inequitably are used to acquire a
these facts were brought to the atten-
monopoly in a relevant market, or to
tion of the USPTO. Apparently, the

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