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A Continuing Obligation to Disclose Information to the Patent Office

Under 37 C.F.R. § 1.56, each inventor and her attorney have a duty to disclose all information that is “material to patentability.” 37 C.F.R. § 1.56 (a) states that:

“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.” (emphasis added)

The duty to disclose information exists “with respect to each pending claim until the claim is canceled or withdrawn from consideration, or the application becomes abandoned.” Thus, if an inventor or attorney learns of material information that would render a claim “obvious” under 35 U.S.C. § 103, then the attorney could cancel the claim. Similarly, if all claims would be rendered obvious or would be considered “anticipated” under 35 U.S.C. § 102, the attorney could allow the entire case to go abandoned by not responding to an outstanding Office action.

Best practice would seem to be to talk at length with inventors about any known references and about the current state of the art. This should be done before wasting a lot of time and effort on claims that cannot rightfully issue from the U.S. Patent & Trademark Office (USPTO). The MPEP § 2004 gives some helpful advice:

“The use of these types of aids [letters, questionnaires and checklists when getting a disclosure from inventors] would appear to be most helpful, though not required, in identifying prior art and may well help the attorney and the client avoid or more easily explain a potentially embarrassing and harmful ‘fraud’ allegation.”

The duty to let an application go abandoned upon learning of some compelling prior art arises from 37 CFR 1.56 and from MPEP § 2001(a):

“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,” (emphasis included).

MPEP § 2001(b) gives the following guidance as to what “information” is considered “material to patentability”:

“(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.

This language is pretty strong and conveys the serious moral and legal duty to submit known “material” references to the USPTO during the pendency of a patent application – any time before a patent issues. The “prima facie” case is a legal standard, and could be considered as evidence that would tend to persuade someone that it is “more likely than not” that the reference or references “teach or fairly suggest” the invention as claimed.

If there is any doubt about whether a reference is material or not, it is best to err on the side of caution and submit any references to the USPTO that are (1) brought to the attention of the inventor or attorney, and (2) “material to patentability.”