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If I forget and/or cannot relocate a reference that would otherwise be required in an information disclosure statement (IDS) under duty of disclosure, are there potential inequitable conduct issues even though I am unable to provide the reference? For instance, in a litigation scenario, discovery could turn up the reference (or at least exposure to such a reference) which one was previously unable to find or recall.

My specific scenario is that for one step/limitation of at least one claim, I feel like I have come across such information before, but cannot recall where. I suppose it is possible I used another product that had such a feature. An examiner search may turn up such a reference, or may not.

My guess would be that failure to recall/relocate is a weak defense, as it is hard to prove and subject to abuse. But at the same time, if even I can't relocate the reference despite my best efforts, it will probably be difficult for a potential challenger to do so.

  • In your scenario do you image "discovery" coming across the reference in general or in your files? The infringer will undoubtably have a more extensive search done than you or the examiner did. That isn't discovery. Discovery is looking on your hard drive for something you downloaded and then forget to put on the IDS. – George White Dec 14 '17 at 1:24
  • @GeorgeWhite Yes, I am assuming that discovery has access everything I do. However, e.g., I don't expect that the discovery process will be able to retrieve Internet access/search history from an ISP or other entity. – user132162 Dec 14 '17 at 2:01
  • I'm not an attorney and have no idea what might get turned up in a high-stake litigation. – George White Dec 16 '17 at 18:24
  • In theory, if you learned about it with a Google search while logged into your Google account, they could subpoena Google for the search and click-through history. In patent litigation, it isn't unusual to see broad ranging discovery. Particularly because you've now admitted in a public forum that you may have seen it. Run it by your patent lawyer. – Gary S Dec 31 '17 at 4:11
  • I'm not really worried about it, especially with the heightened Therasense standard. However, as someone fairly new to the field, it is quite amazing how seemingly simple questions like this don't have well-established, straightforward answers. In a field like engineering, it would be totally unacceptable. I'm guessing the reasons are that (1) the field is niche/low number of practitioners, (2) government employees don't have a strong incentive to make things clear, and (3) it's expensive to get an answer via litigation. – user132162 Jan 2 '18 at 19:33
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Just following up on this.

1) Note that this only applies in the US, as the only "duty of disclosure" in other jurisdictions relates to citing co-pending prosecution history/search results, which I will assume one has not "forgotten".

2) In the US, not disclosing prior art that one was previously exposed to, understood the materiality of, but forgot about and/or could not re-locate by the time of filing would likely not constitute inequitable conduct, as the inaction would not satisfy the "intentionality to deceive" prong of the post-Therasense standard. See more here.

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