The United States Patent and Trademark Office (USPTO) requires patent applicants to comply with the duty of candor; this means that they must act with honesty and good faith, disclosing all information that is relevant to the patentability of their inventions. Applicants must be careful to stay consistent in their statements because any finding of fraud could lead to a patent being rendered unenforceable.

Panitch Schwarze attorney Ragi A.I. Elias authored an article in The Legal Intelligencer outlining the pitfalls that come with contradictory statements during foreign patent prosecution. When applying for patents in countries outside the U.S., innovators might be tempted to cite different distinguishing features of an invention or narrow the scope of their patent claims. If these statements are inconsistent with an established U.S. patent for the same invention, the entire patent could be deemed unenforceable by the USPTO due to inequitable conduct.

Patent applicants should pay close attention to their arguments and statements to ensure they are consistent. If any contradictions are identified, being proactive in communicating with the USPTO and foreign patent practitioners is key to avoiding the “atomic bomb” of an unenforceable patent.

Read the full article here: The Duty of Candor and Contradictory Statements During Foreign Prosecution (Subscription is required.)