Evaluating the Duty of Disclosure in Patent Law

Abstract

U.S. patent law imposes on applicants a duty to submit relevant prior art references to the USPTO, but the impact of this duty is unclear. On one hand, some studies suggest that applicant-submitted prior art references play an important role in influencing the scope of issued patents. On the other hand, some scholars have argued that examiners tend to ignore applicantsubmitted references in favor of their own search results. Moreover, the duty of disclosure forces applicants to bear both compliance costs and risks associated with undercompliance. In this paper I analyze a novel data set I constructed that describes the prosecution histories of more than 1.4 million issued U.S. patents. Applying this data set, I examine the extent to which the duty of disclosure yields references that patent examiners select to support rejections, which examiners use to weed out uninnovative patents and to force applicants to narrow overly broad patent claims. I also compare rejection references identified by applicants with those identified by examiners, and I identify characteristics of applicant-submitted references selected to support rejections. These findings have implications for several important legal and policy disputes, such as patent quality, proposed reforms to the duty of disclosure, and ongoing debates regarding the inequitable conduct doctrine.