Every patent prosecutor has heard some version of the same question: Why should an applicant disclose a reference that might be used to reject the application? The question is understandable. Counsel is retained to advance the client’s interests, and an information disclosure statement, or IDS, may place potentially adverse information before the examiner. But patent examination is not ordinary adversarial litigation. It is an ex parte administrative proceeding in which the a

Consider a familiar device-company scenario. A regulatory team prepares a 510(k) and tells FDA that a design feature tracks a predicate device, is supported by familiar engineering literature, and does not raise new questions of safety or effectiveness. Around the same time, the patent team argues to the USPTO that the same feature, or a particular implementation of it, is central to novelty or nonobviousness. Each position may be defensible. The risk begins when no one has p