Are You Meeting Your Duty of Disclosure To The USPTO?
Everyone who is involved in any substantive way in the preparation or prosecution of an application for a patent before the United States Patent and Trademark Office (PTO) owes a duty of candor and good faith to disclose information material to the patentability of a claim to the PTO and to the public.1 This duty is commonly referred to as the “Duty Of Disclosure."2 The Duty Of Disclosure extends to all inventors; all attorneys or agents who prepare or prosecute the application; and all individuals who are involved with the preparation or prosecution of the application and who are associated with the inventor, with the assignee, or with anyone to whom there is an obligation to assign the application.3
The extent of this duty is commensurate with the degree of involvement of the individual in the preparation or prosecution of the subject application. For example, individuals other than the attorney, agent, or inventor may satisfy their Duty Of Disclosure by disclosing information to the attorney, agent, or inventor.4
Such information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and establishes by itself, or in combination with other information, a prima facie case of unpatentability of a claim; or it refutes, or is inconsistent with a position the applicant takes in: (1) opposing an argument of unpatentability raised by the PTO or (2) asserting an argument of patentability.5
The Duty Of Disclosure exists with respect to each pending claim until that claim is canceled or withdrawn from consideration or the application for patent becomes abandoned.6 Put differently, there is no duty to submit information unless it is material to the patentability of any existing claim.
Examples of information material to a patent application include, but are not limited to:
(1) the invention was known or used by others in this coun¬try, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent; (2) the invention was patented or described in a printed pub¬lication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United State;
(3) abandonment of the invention at any time;
(4) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States; (5) the invention was described in an application for patent by another filed in the United States before the invention by the applicant for patent or a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent;
(6) information showing that a named inventor did not himself invent the subject matter sought to be patented; or
(7) information showing that before the applicant's invention thereof, the invention was made in this country by another who had not abandoned, suppressed, or concealed it.7
In order to meet the applicant's Duty Of Disclosure, the applicant should file an Information Disclosure Statement within three months of the filing of the application.8
The contents of the Information Disclosure Statement should include a listing of each patent, publication, or other information submitted for consideration to the PTO; a legible copy of each such patent, publication, or other information submitted; and a concise explanation of only those items that are not in the English language.9
1. 37 CFR. § 1.56 2. Manual of Patent Examining Procedure (MPEP) § 2001 3. 37 CFR. § 1.56(c) and MPEP § 2001.01 4. 37 CFR. § 1.56(d) and MPEP § 2002.01 5. 37 CFR. § 1.56(b) and MPEP § 2001.03 6. 37 CFR. § 1.56(a) and MPEP § 2001.03 7. 35 U.S.C. 102 and MPEP §706.02 8. 37 CFR § 1.97 and MPEP § 609 9. 37 CFR § 1.98(a) and MPEP § 609