Any Risks in Disclosing or Receiving Information with Examiners?

Nov 24, 2014

 

Is it possible to disclose too much with Examiners at the United States Patent and Trademark office?  The United States Patent and Trademark office is having a "Tech Week" the first week of December (Dec.1-5, 2014). This program is designed to permit scientists, engineers, and technology experts the ability to instruct patent examiners on their field of science and technology. The idea is that this instruction will aid patent examiners in being more informed about the state of technology in the various industries and further help to improve the patent process.

 

Is there risk to inventors from this disclosure?  Yes, but admittedly it may be minimal. Assuming each presenter has taken the necessary steps to protect their technology inventions prior to disclosure at this event, what harm is there?  Any information examiners learn and receive can be used against any relevant application.  This applies to the presenter in any new or future application and to other inventors navigating the process. Some will counter this small risk by saying that it serves to help strengthen the patents being issued.  I do not disagree.  But just keep in mind that any disclosure and education we give the examiners can have some risk with it.  Additionally, it is my experience that our examiners are pretty knowledgeable in their particular fields and are exposed daily to new and novel inventions.  Do they really need more understanding?

 

On a flip side, the USPTO is organizing opportunities to interact with the USPTO here in Texas where they provide the public information. We are currently in communication with the USPTO about workshops and informative sessions that may arise in your local area. These workshops/sessions would be used to provide general guidance and overviews of the patent procedures (as opposed to hearing your secrets).

 

What danger is there in this? The USPTO can not give legal advice for your particular situation. At times they seek to build confidence in inventors who wish to go at it alone.  There is a fine line with providing the public information and in providing to much specific information. Additionally, on average the strength of patents done by an attorney are stronger than those done by an inventor alone.  So these workshops/sessions, if not done well may actually work to harm the strength of patents issued.  Other nuances exist of course.  

 

In the end, the USPTO is making efforts to be engaged with inventors. Most of it appears harmless but there are always risks or two sides to the situation. It is good to see them getting involved in the public but we counsel you to be cautious when disclosing information to the patent office and be realistic when it comes to filing your own applications. 

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