Question 15
Domain 3: Patent Prosecution and MPEP-Based PracticeA patent applicant discovers relevant prior art after filing. Under the duty of disclosure, what must the applicant do?
Correct answer: C
Explanation
Under the duty of disclosure, applicants must disclose to the USPTO all information known to be material to patentability. If relevant prior art is discovered after filing, the applicant should submit an Information Disclosure Statement (IDS) so the examiner can consider it during prosecution.
Why each option is right or wrong
A. Nothing, because the duty ends at filing
B. File a petition to make special
C. Submit an Information Disclosure Statement (IDS) to the USPTO
37 C.F.R. § 1.56 imposes a duty of candor and good faith on each individual associated with the filing and prosecution of a patent application to disclose information material to patentability. When prior art is discovered after filing, the proper mechanism is to file an Information Disclosure Statement under 37 C.F.R. § 1.97, which allows the USPTO to consider the reference during examination; if filed outside the initial disclosure window, the applicant must also satisfy the timing and certification requirements in § 1.97(e) and the fee requirements in § 1.17(p), as applicable.
D. Withdraw the application immediately