1

When filing a USPTO utility patent, one files a Form sb008a and sb008b: a list of other patents and non patent literature.

THOUGHTS

I understand one can not patent something that has been patented or published. Although one could theoretically list thousands of citations, it does not prove that in itself does not prove that it has not been patented or published in the past.

I feel like I am giving the examiner the ammunition to shoot and blast the application.

QUESTION

  • In what way does said disclosure forms advance the patent application process?
  • Why is this required? (other than 'one is compelled to')
2

It advances the application process by fulfilling an important requirement on the applicant. It could also help the examiner in formulating a good first office action. If the first office action is not on target the whole process is delayed and you may spend money later on an RCE.

Why does the law require it? Patent examination is considered a one party preceding. As such you need to tell all. In a normal U.S. court, there are two sides adversarially hammering out the truth (in theory). That is why in an adversarial proceeding one side may not need to tell all. You can tell your attorney you committed murder and they can't tell the judge. If you tell your patent attorney (or agent) that you got most of the ideas from someone else, they do need to tell the USPTO. That is because the other party is the public and they are absent. You are asking the government to let you prohibit the public from doing something and the public isn't in the process fighting you. Since it is one-sided, you need to disclose.

You are required to give the examiner any ammunition you know of that could help shoot your application down. That is what you are compelled to list. There is no requirement to do any searching; there a requirement to let the USPTO know about references and actions that tend to hurt your application that you are aware of. Until a court decision a few years, patents were routinely being torn up for the "inequitable conduct" of not listing something that was potentially relevant. That situation is not as bad anymore but the common wisdom is that it is much better to list something that might be marginally relevant than to leave it off. When in doubt, disclose.

Examiners are organized: the topics they examine day in and day out and will likely reveal prior-art closer to the subject matter than the you have found.

  • Agreed. I do not search, write or evaluate patents for a living, so I would expect a professional would have a higher likelihood of finding relevant prior art. – gatorback Apr 9 at 22:03
  • I have found that inventors often have an unintentional blind spot when it comes to searching their own invention. If I were searching your idea I would have the mindset that it, or something very close, has already been done and the quicker I find it the better. – George White Apr 10 at 0:16
  • Agreed. Better to find patent disqualifying prior art as early as possible so as to not waste time and resources pursuing an application that will be rejected (102 Novelty?) because of disqualifying prior art – gatorback Apr 10 at 11:50
  • Or to shape your claims. An invention might have several cool aspects and if one is old, maybe another one is where you need to focus your claims. – George White Apr 10 at 18:03

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