Information Disclosure Best Practices: Navigating the Risks of IDS Filings

Patent practice is unique in many ways. One such way is that negative information known to those who are substantively involved in the prosecution of a patent application must be disclosed to the patent examiner during patent prosecution. This is accomplished by preparing and filing an Information Disclosure Statement (IDS). 

The rule is easy enough to articulate, but little surrounding the duty of candor mandated by Rule 56 is easy. Despite the fact that all patent practitioners would easily agree on the law, that prior art references which are material to patentability need to be disclosed, different philosophies on what constitutes best practices abound. A recent panel discussion moderated by Gene Quinn, Patent Attorney & President & CEO of IPWatchdog, Inc. with panelists Jeff Waters, partner at Cantor Colburn LLP and Michael Rau, Director IP Services at Derwent, Clarivate Analytics examined the questions around Information Disclosure requirements, best practice for navigating IDS filings and the risks involved. 

Discussions included a review of the duty of candor in disclosing known prior art required under Rule 56, what to do if a client refuses to allow disclosure, questions around materiality of prior art and intent to withhold disclosure (Therasense v Becton Dickinson), potential impact of supplemental art on Patent Term Adjustment (Supernus v Iancu), and the QPIDS pilot program introduced by USPTO in 2012.

The full summary of discussions is available for download here.