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If I go to the DMV and try to register a car that doesn't belong to me, or if I enter into a contract under fraudulent assumptions, I could be criminally or civilly liable. I am not free to make false claims in legally binding documents.

What are the criminal penalties for filing a patent based on untrue statements? Is there no reason to ask applicants to swear that they believe that all the claims are valid with penalties for perjury?

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2 Answers 2

In practice this very rarely comes up. Until a recent case (Therasense) very often the patent practitioner who filed the case would be accused of "inequitable conduct" in an attempt to get a patent torn up. It was a bad situation where patents were made unenforceable for not submitting a document that provably would not have made a difference. Now the standards for inequitable conduct are much higher. And that is something that happens in court during an infringement case. The USPTO can go after the registered practitioner and discipline them in egregious cases. I do not think the U.S. attorney ever goes after the inventors or applicant.

I presume the patent you are talking about is US 8,502,060. On its front page 32 US patents, 12 US applications, 11 foreign patent documents and 11 non-patent literature documents are cited. That is a lot of prior art and it would be very likely that anything not on that list could be argued to be "cumulative" rather that teaching something above and beyond those 67 documents.

As noted in another thread, the examination was done very quickly. That is a "feature" of the Accelerated Examination process. The applicant does all of the work of searching, examination, imagines the rejections they might get and responds to those hypothetical rejections in a very detailed manner. This puts the applicant on-record in way that can come back to haunt them later. In a normal examination you try to say as little as possible to overcome the rejections actually presented.

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One could look at 18 USC 1001 which is required for submitting a US Patent.

http://www.law.cornell.edu/uscode/text/18/1001

18 USC 1001

(a) Except as otherwise provided in this section, whoever, in any matter within the jurisdiction of the executive, legislative, or judicial branch of the Government of the United States, knowingly and willfully—

(1) falsifies, conceals, or covers up by any trick, scheme, or device a material fact;

(2) makes any materially false, fictitious, or fraudulent statement or representation; or

(3) makes or uses any false writing or document knowing the same to contain any materially false, fictitious, or fraudulent statement or entry; shall be fined under this title, imprisoned not more than 5 years or, if the offense involves international or domestic terrorism (as defined in section 2331), imprisoned not more than 8 years, or both. If the matter relates to an offense under chapter 109A, 109B, 110, or 117, or section 1591, then the term of imprisonment imposed under this section shall be not more than 8 years.

(b) Subsection (a) does not apply to a party to a judicial proceeding, or that party’s counsel, for statements, representations, writings or documents submitted by such party or counsel to a judge or magistrate in that proceeding.

(c) With respect to any matter within the jurisdiction of the legislative branch, subsection (a) shall apply only to—

(1) administrative matters, including a claim for payment, a matter related to the procurement of property or services, personnel or employment practices, or support services, or a document required by law, rule, or regulation to be submitted to the Congress or any office or officer within the legislative branch; or

(2) any investigation or review, conducted pursuant to the authority of any committee, subcommittee, commission or office of the Congress, consistent with applicable rules of the House or Senate.

If you're going to sign your name to a patent and put your name on an OATH as required, then you would likely sign a statement like this:

I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than (5) years, or both.

Then you should have done your homework.

There is also Rule 11 to consider for being sued wrongfully over patent infringement, although it is very hard to get. If Rule 11 applied, the attorneys and the plantiff could be responsible for serious damages and even possibly FTC Sanctions.

http://www.law.cornell.edu/rules/frcp/rule_11

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Rule 11 is an USPTO rule governing the representation of others in obtaining a patent. It only applies to registered practitioners and the penalty is to lose your registration. One needs to be an attorney to engage in litigation, but there is not requirement that one must the a registered patent attorney to engage in patent litigation. Court = attorney; dealing with the USPTO for others = registered practitioner. They are orthogonal. The USPTO has no jurisdiction over attorneys who litigate patent matters who not also happen to be registered practitioners. –  George White Dec 19 '13 at 23:23

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