Intellectual Property Report

The Battle of the Duties: Navigating Confidential Documents and the U.S. Patent Office's Duty of Disclosure

Steve Lendaris, Val Svystun

Patent attorneys practicing before the U.S. Patent and Trademark Office ("USPTO") can find themselves in a situation where they must balance their client's desire to maintain the confidentiality of certain documents with their professional duty to disclose information material to patentability to the USPTO. Information potentially material to patentability may include litigation documents, e.g., admissions during depositions, trade secrets, or even documents related to product testing. Although, attorneys can, in certain instances, redact the confidential information from documents prior to submission to the USPTO, this is not a viable option if the confidential information itself is potentially material to patentability. In such cases, attorneys should consider filing an information disclosure statement ("IDS") under § 724 of