Rule 56: There’s No Such Thing as TMI at the Patent Office

Keeping secrets is bad for relationships and the USPTO feels secrets are bad for patents as well. In fact, the Patent Office doesn’t like secrets so much that they have a special rule against hiding the ball during the patent application process, Rule 56.

The Patent Office requires “each individual associated with the filing and prosecution of a patent application” to disclose any all information they have which is material to the patent application in question.

This rule is serious business. The highest paid attorney ($900+/hr) I have ever met built his practice around Rule 56 disclosures. Why? Because failure to disclose known prior art under Rule 56 can invalidate an otherwise perfectly valid patent, destroying hard won competitive and technological advantages.

Rule 56 is part of  the USPTO’s broader carrot-and-stick approach to producing better patent: on one hand, if you fail to disclose key information during the patent application process, your patent may end up being an invalid, worthless piece of paper. On the other hand, anything you disclose to the Patent Office will be considered during the application process. Any resulting patent will be granted with a presumption that the patent is valid in light of the information considered during the application process. This presumption can lead to a significantly stronger, more valuable patent.

Rule 56 requires that the Patent Office be informed of any and all documents, images, videos, devices on the market, and other sources of information that are material to the patentability of the invention involved in the patent application process. Rule 56 doesn’t apply to just the inventor; any patent agent or patent attorney that assists with the application must share their knowledge. Even assistants who were substantively involved in the patent application process must disclose!

 What is material to patentability?

Information is material to the patentability of the invention in question if the patent would not issue “but-for” the information being withheld from the Patent Office. In other words, if the information relates to the novelty, usefulness, or obviousness of the invention, it should be disclosed because it might be a bar to patentability of the invention.

Carrot and Stick approach

The Stick: Lying to the Patent Office about even a portion of a patent can result in harsh punishment. Currently, if even one claim in a patent is secured by violating Rule 56, the entire patent may be invalidated. Where an “applicant knew of [prior art], knew that it was material, and made a deliberate decision to withhold it” a court may invalidate the patent.

The Carrot: As mentioned earlier, there is a huge up side to disclosing potentially relevant sources of prior art to the Patent Office: anything you disclose will be considered by the patent office when determining whether your application should be granted! Issued patents are presumed valid with respect to any information or prior art considered by the Patent Office during examination of the patent application.

Maximum disclosure to the Patent Office directly increases the strength of your patent in two ways.

First, considering a large number of sources helps the examiner and your patent agent  or patent attorney arrive at the strongest valid claims to protect your invention. Issuing a patent which claims the broadest appropriate protection ensures that the patent will stand up to scrutiny whether from a potential buyer, licensee, or in court!

Second, because patents are presumed valid in light of information considered during the patent application process, challengers or infringers must overcome the high barrier of this presumption in order to convince a court your patent isn’t valid. This means that, should your patent ever end up in court, it will be extremely difficult for your opponent to have your patent invalidated in light of the references you submitted because the patent office already considered you invention in light of those references and gave it their blessing.

Information considered during prosecution is listed in the patent itself in the “References Cited” section of the patent. This section starts on the first page of the patent and in some patents is quite lengthy. For example, Patent # 5,345,238, “Satellite Signature Suppression Shield” lists sixteen other patents in its “References Cited” section. Patent # 7,556,490, “Multi-Material Stereolithography” lists more than fifty patents and patent applications as well as a multitude of published papers and articles.

Happy Creating!