2001 Duty of Disclosure, Candor and Good Faith
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Section Frequency Chart
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(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:
(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.(3) A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
(e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
2001.01 Who Has Duty to Disclose?
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The duty of disclosure applies only to individuals, not to organizations.
- For instance, the duty of disclosure would not apply to a corporation or institution as such.
- However, it would apply to individuals within the corporation or institution who were substantively involved in the preparation or prosecution of the application, and actions by such individuals may affect the rights of the corporation or institution.
2001.03 To Whom Duty of Disclosure Is Owed
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This duty “in dealing with” and “to” the Office extends, of course, to all dealings which such individuals have with the Office, and is not limited to representations to or dealings with the examiner.
- For example, the duty would extend to proceedings before the Patent Trial and Appeal Board and the Office of the Commissioner for Patents.
2001.04 Information Under 37 CFR 1.56(a)
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Each individual associated with the filing and prosecution of a patent application has a duty to disclose all information known to that individual to be material to patentability as defined in the section.
- Thus, the duty applies to contemporaneously or presently known information.
- The fact that information was known years ago does not mean that it was recognized that the information is material to the present application.
The term “information” means all of the kinds of information required to be disclosed and includes any information which is “material to patentability.”
“Materiality is not limited to prior art but embraces any information that a reasonable examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent.”
The duty to disclose information exists until the application becomes abandoned.
- The duty to disclose information, however, does not end when an application becomes allowed but extends until a patent is granted on that application.
- The rules provide for information being considered after a notice of allowance is mailed and before the issue fee is paid.
The rules also provide for an application to be withdrawn from issue:
(A) because one or more claims are unpatentable;
(B) for express abandonment so that information may be considered in a continuing application before a patent issues; or
(C) for consideration of a request for continued examination (RCE)
In a continuation-in-part application, individuals have a duty to disclose to the Office all information known to be material to patentability which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
2001.05 Materiality Under 37 CFR 1.56(b)
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2001.06 Sources of Information Under 37 CFR 1.56
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Materiality controls whether information must be disclosed to the Office, not the circumstances under which or the source from which the information is obtained.
- If material, the information must be disclosed to the Office.
- The duty to disclose material information extends to information such individuals are aware of prior to or at the time of filing the application or become aware of during the prosecution thereof.
Individuals may be or become aware of material information from various sources such as, for example, co-workers, trade shows, communications from or with competitors, potential infringers, or other third parties, related foreign applications, prior or copending United States patent applications, related litigation and/or post-grant proceedings and preliminary examination searches.
2001.06(a) Prior Art Cited in Related Foreign Applications
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2001.06(b) Information Relating to or From Copending United States Patent Applications
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Accordingly, the individuals cannot assume that the examiner of a particular application is necessarily aware of other applications which are “material to patentability” of the application in question, but must instead bring such other applications to the attention of the examiner.
2001.06(c) Information From Related Litigation and/or Trial Proceedings
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In many instances, these trial proceedings yield information that may be considered material to pending related patent applications.
Where the subject matter for which a patent is being sought is or has been involved in litigation and/or a trial proceeding, or the litigation and/or trial proceeding yields information material to currently pending applications, the existence of such litigation and any other material information arising therefrom must be brought to the attention of the examiner or other appropriate official at the U.S. Patent and Trademark Office.
2001.06(d) Information Relating to Claims Copied From a Patent
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