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Prior Art Submission

Posted Tuesday, April 7, 2009 by Jim Ruttler

While an applicant is not required to conduct any prior art research prior to filing a patent application or even during examination, the applicant is required to submit any known prior art to the patent office. The timing for doing so is anytime before the first office action is issued in the application or within three months of discovery of the prior art. When these windows of opportunity are missed it results in the examiner having to review the newly submitted references after already having issued rejections or even allowance of the patent application. Thus, it is necessary to file a special petition to have the prior art considered along with payment of a fee. Alternatively, it is possible to include the prior art along with a request for continued examination after a final office action.

Failure to provide known prior art can be gounds for invalidation of the patent during an infringement suit. Accordingly, it is a good idea to error on the side of caution and provide any known prior art to the patent office as soon as it is discovered.

Keep in mind that prior art includes any patents, patent applications, foreign patents, foreign patent applications, non-patent publications, and even prior art and rejections issued by an examiner in a related patent application.

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