The Practitioner's Conflict: Prior Art Knowledge and the Duty of Candor
You represent a client, NovaTech, in prosecuting a patent on a battery separator. During prosecution, you learn from a former NovaTech engineer that NovaTech sold 50 units of a prototype separator to a university lab in 2022, before the application's 2023 filing date. The sale was under a confidentiality agreement, but the university published a paper describing the separator in 2022. The examiner has not cited the paper. Your client instructs you not to disclose the paper because it is "not prior art" and the sale was confidential. You also discover that a reference you cited in an IDS was mischaracterized in your earlier response as teaching a feature it does not teach. The client wants to proceed to allowance without correcting the record.
1. Must you disclose the 2022 university paper and the prototype sale to the USPTO?
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Under 37 C.F.R. 1.56, each individual associated with the application has a duty to disclose material information. Information is material if it is not cumulative and a reasonable examiner would consider it important in deciding patentability. The university paper describes the separator and is material if it discloses claimed features. The 2022 sale is potentially prior art under 102(a)(1) (on sale/public use), though a confidential sale may not qualify as a public sale - but the paper is independently material.
You must disclose the paper in an IDS. The client's instruction not to disclose does not override the duty of candor; you cannot assist in withholding material information. If the client insists, you should withdraw under 37 C.F.R. 1.16 and the ethics rules. The sale should also be disclosed if it is potentially prior art; let the examiner decide materiality.
2. What must you do about the mischaracterized reference in your earlier response?
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You must correct the record. A mischaracterization of a cited reference is a misrepresentation that can constitute inequitable conduct if material and made with deceptive intent (Therasense). Even without intent, you have an ethical duty of candor and accuracy. File a supplemental response or a corrected IDS/remarks identifying the error and providing an accurate description of the reference.
Do not simply ignore it. If the mischaracterization affected the examiner's analysis, the correction may reopen prosecution. Advise the client that correcting the record is required and that concealment risks unenforceability of the entire patent.
3. If the client refuses to allow disclosure, what are your options as the practitioner?
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You cannot continue to represent the client in a way that violates the duty of candor (37 C.F.R. 1.56; ABA Model Rule 1.2(d), 1.16). Options: (1) persuade the client to disclose; (2) if the client refuses, withdraw from representation, complying with 37 C.F.R. 1.16 and applicable ethics rules, and take steps to avoid prejudice to the client; (3) do not file any paper that conceals material information.
You should document the advice and the client's refusal. Withdrawal does not relieve you of the duty to protect the client's interests during the transition. If you have already made a misrepresentation, you must correct it before withdrawing or ensure the correction is made.