I have specific information as a deep matter expert on a topic that invalidates most, if not all, claims of a patent application currently pending. Some this information may be missed by the patent office since they are not deep matter experts and they may admit claims which should be invalidated if the prior art is understood. How do I proceed in informing the patent office of the details outlining these invalidation arguments? Complication, I am the inventor of the technology but not the assignee.

2 Answers 2


The inventors, applicants, attorney and everyone involved in a pending patent application are required to inform the patent office of any published document or activity that pre-date the application and that might make for a rejection. You are also required to provide them any information you know of that tends to contradict a position you have taken in the case. Normally the way to discharge this responsibility is to inform the inventor or the patent attorney. If you are disconnected from the process you could write down your analysis and provide it to the attorney. They can ignore random documents that arrive over the transom but they can't ignore an affidavit from the inventor. The duty to disclose is in 37 cfr 1.56

There are ways for third parties to submit prior art documents with anonymity.

On the other hand you have presumably signed a declaration saying you are the inventor. If there is no true invention claimed (in your opinion) then that declaration is false. If the application was submitted before last Sept. 16 you most likely signed:

I hereby declare that: (1) Each inventor's residence, mailing address, and citizenship are as stated below next to their name; and (2) I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought on the invention titled:


"I am the inventor of the technology" is ambiguous; George thinks he means the technology of the application, and so he must withdraw the application, and give back his licensing fee depending on that agreement's wording.

I think he means he is the inventor of the invalidating technology but doesn't want to start an expensive fight, and is asking for the 3rd party methods.

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