Should You Disclose or Receive Information with Examiners?

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?

Potential harms of disclosing too much:

  • Unnecessarily narrowing your claims: You might reveal alternative embodiments or functionalities of your invention that could form separate claim limitations, potentially restricting the scope of your patent protection.
  • Enabling competitors: You could inadvertently provide valuable insights about your invention that competitors could use to design around your patent or develop their own products.
  • Raising objections by the examiner: Disclosing irrelevant or unnecessary details could distract the examiner from the core aspects of your invention and lead to unnecessary objections or rejections.

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).

However, there are also situations where more disclosure can be beneficial:

  • Addressing prior art: If the examiner cites prior art that seems relevant, disclosing additional details might help demonstrate how your invention is distinct and non-obvious.
  • Explaining complex concepts: Providing comprehensive explanations and examples can be helpful for the examiner to fully understand your invention, increasing the chances of obtaining a patent.
  • Responding to office actions: When addressing the examiner’s objections, additional information might be required to clarify your claims or overcome rejections.

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.

Finding the right balance:

Ultimately, the key is to strike a balance between providing enough information for the examiner to understand your invention and avoid disclosing unnecessary details that could harm your patent protection. Here are some tips:

  • Focus on the claims: Always ensure your disclosure supports and clearly defines the scope of your claims, which are the legal boundaries of your patent protection.
  • Avoid irrelevant details: Don’t go off on tangents or disclose alternative embodiments that are not part of your claimed invention.
  • Seek legal advice: Consult with a patent attorney to determine the appropriate level of disclosure for your specific invention and situation.

Remember, the USPTO has a duty of disclosure obligation, meaning you are legally required to disclose all material information relevant to patentability, including prior art known to you that might make your invention seem less novel or non-obvious. Failure to do so could result in your patent being invalidated later.

In summary, while there’s no absolute rule against disclosing too much, it’s crucial to be mindful of the potential risks and find the right balance between informing the examiner and protecting your invention. Consulting with a patent attorney is highly recommended to ensure you navigate the patent prosecution process effectively.

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner.  He brings a particular set of strengths and unique perspectives to the firm.    
 Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005.  He was an engineer for a number of years at a number of large corporations before pursuing his law degree.  He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010.  By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.