Chapter 2000 Duty of Disclosure 2000 [Reserved] 2000.01 Introduction 2000 [Reserved] 2001 Duty of Disclosure, Candor, and Good Faith 2000.01 Introduction [R-08.2017] 2001.01 Who Has Duty To Disclose 2001.02 [Reserved] This Chapter deals with the duties owed toward the 2001.03 To Whom Duty of Disclosure Is U.S. Patent and Trademark Of®ce by each individual Owed who is associated with the preparation or prosecution 2001.04 Information Under 37 CFR 1.56(a) of the application. Each individual associated with 2001.05 Materiality Under 37 CFR 1.56(b) the ®ling and prosecution of a patent application, 2001.06 Sources of Information under 37 CFR supplemental examination, or patent reexamination 1.56 has a duty to disclose to the Of®ce all information 2001.06(a) Prior Art Cited in Related Foreign known to that individual to be material to Applications patentability as de®ned in this section. These duties, 2001.06(b) Information Relating to or From of candor and good faith and disclosure, have been Copending United States Patent codi®ed in 37 CFR 1.56 and 37 CFR 1.555, as Applications promulgated pursuant to carrying out the duties of 2001.06(c) Information From Related the Director under Sections 2, 3, 131, and 132 of Litigation and/or Trial Title 35 of the United States Code. Proceedings 2001.06(d) Information Relating to Claims In some instances, the duty to disclose may constitute Copied From a Patent correcting erroneous material information in the 2002 Disclosure Ð By Whom and How Made record. Effective September 16, 2012, the America 2002.01 By Whom Made Invents Act (AIA) amended the patent laws to 2002.02 Must be in Writing modify notable aspects of the duty of disclosure. 2003 Disclosure __ When Made Speci®cally, the AIA eliminated the requirement 2003.01 Disclosure After Patent Is Granted that applicants disclose that an error in a patent (e.g., 2004 Aids to Compliance With Duty of change in inventorship) was made without any Disclosure deceptive intent before correction is permitted. See 2005 Comparison to Requirements for 35 U.S.C. 116, 35 U.S.C. 251, and 35 U.S.C. 256. Information This does not negate, however, the continuing 2006-2009 [Reserved] obligation to practice candor and good faith in all 2010 Of®ce Handling of Duty of dealings before the Of®ce. Disclosure/Inequitable Conduct Issues 2011 Correction of Errors in Application On October 28, 2016, the Of®ce issued a Notice of 2012 Reissue Applications Involving Issues Proposed Rulemaking proposing revisions to the of Fraud, Inequitable Conduct, and/or materiality standard for the duty to disclose Violation of Duty of Disclosure information in patent applications and reexamination 2012.01 Collateral Estoppel proceedings (duty of disclosure) in light of the 2013 Protests Involving Issues of Fraud, decision by the U.S. Court of Appeals for the Federal Inequitable Conduct, and/or Violation Circuit (Federal Circuit) in Therasense, Inc. v. of Duty of Disclosure Becton, Dickinson & Co., 649 F.3d 1276, 1288, 99 2014 Duty of Disclosure in Reexamination USPQ2d 1065 (Fed. Cir. 2011)(en banc ). Proceedings and Supplemental Speci®cally, the Of®ce is considering harmonizing Examination the materiality standard for the duty of disclosure to 2015 [Reserved] adopt the ªbut-forº materiality standard for 2016 Fraud, Inequitable Conduct, or inequitable conduct as set forth in Therasense and Violation of Duty of Disclosure Affects adopted in subsequent inequitable conduct cases, All Claims which will result in revisions to 37 CFR 1.56 and 2017-2022 [Reserved] 37 CFR 1.555. While these proposed rule changes 2000-1 Rev. 10.2019, June 2020 § 2001 MANUAL OF PATENT EXAMINING PROCEDURE have not yet been ®nalized, it is still important for (1) It establishes, by itself or in combination with other Of®ce stakeholders to recognize the split in how information, a prima facie case of unpatentability of a claim; materiality may be considered within the Of®ce and or in the courts. Some of the more instructive recent (2) It refutes, or is inconsistent with, a position the cases on inequitable conduct have been incorporated applicant takes in: in the discussion below to provide guidance on (i) Opposing an argument of unpatentability relied compliance with the duty of disclosure regardless on by the Of®ce, or of the materiality standard. (ii) Asserting an argument of patentability. (3) A prima facie case of unpatentability is established 2001 Duty of Disclosure, Candor, and Good when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, Faith [R-08.2017] burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the 37 CFR 1.56 Duty to disclose information material to speci®cation, and before any consideration is given to evidence patentability. which may be submitted in an attempt to establish a contrary conclusion of patentability. [Editor Note: Para. (c)(3) below is applicable only to patent applications ®led under 35 U.S.C. 111(a) (c) Individuals associated with the ®ling or prosecution of or 363 on or after September 16, 2012.] a patent application within the meaning of this section are: (1) Each inventor named in the application; (a) A patent by its very nature is affected with a public (2) Each attorney or agent who prepares or prosecutes interest. The public interest is best served, and the most effective the application; and patent examination occurs when, at the time an application is being examined, the Of®ce is aware of and evaluates the (3) Every other person who is substantively involved teachings of all information material to patentability. Each in the preparation or prosecution of the application and who is individual associated with the ®ling and prosecution of a patent associated with the inventor, the applicant, an assignee, or application has a duty of candor and good faith in dealing with anyone to whom there is an obligation to assign the application. the Of®ce, which includes a duty to disclose to the Of®ce all (d) Individuals other than the attorney, agent or inventor information known to that individual to be material to may comply with this section by disclosing information to the patentability as de®ned in this section. The duty to disclose attorney, agent, or inventor. information exists with respect to each pending claim until the (e) In any continuation-in-part application, the duty under claim is cancelled or withdrawn from consideration, or the this section includes the duty to disclose to the Of®ce all application becomes abandoned. Information material to the information known to the person to be material to patentability, patentability of a claim that is cancelled or withdrawn from as de®ned in paragraph (b) of this section, which became consideration need not be submitted if the information is not available between the ®ling date of the prior application and the material to the patentability of any claim remaining under national or PCT international ®ling date of the consideration in the application. There is no duty to submit continuation-in-part application. information which is not material to the patentability of any existing claim. The duty to disclose all information known to 37 CFR 1.56 (pre-AIA) Duty to disclose information material be material to patentability is deemed to be satis®ed if all to patentability. information known to be material to patentability of any claim issued in a patent was cited by the Of®ce or submitted to the [Editor Note: Para. (c)(3) below is not applicable Of®ce in the manner prescribed by §§ 1.97(b)-(d) and 1.98. to patent applications ®led under 35 U.S.C. 111(a) However, no patent will be granted on an application in or 363 on or after Sept. 16, 2012.] connection with which fraud on the Of®ce was practiced or attempted or the duty of disclosure was violated through bad ***** faith or intentional misconduct. The Of®ce encourages applicants to carefully examine: (c) Individuals associated with the ®ling or prosecution of a patent application within the meaning of this section are: (1) Prior art cited in search reports of a foreign patent ***** of®ce in a counterpart application, and (2) The closest information over which individuals (3) Every other person who is substantively involved associated with the ®ling or prosecution of a patent application in the preparation or prosecution of the application and who is believe any pending claim patentably de®nes, to make sure that associated with the inventor, with the assignee or with anyone any material information contained therein is disclosed to the to whom there is an obligation to assign the application. Of®ce. ***** (b) Under this section, information is material to 37 CFR 1.56 de®nes the duty to disclose information patentability when it is not cumulative to information already of record or being made of record in the application, and to the Of®ce. Rev. 10.2019, June 2020 2000-2 DUTY OF DISCLOSURE § 2001.04 2001.01 Who Has Duty To Disclose 2001.02 [Reserved] [R-08.2017] 37 CFR 1.56 Duty to disclose information material to patentability. 2001.03 To Whom Duty of Disclosure Is ***** Owed [R-08.2017] (c) Individuals associated with the ®ling or prosecution of a patent application within the meaning of this section are: 37 CFR 1.56(a) states that the ªduty of candor and good faithº is owed ªin dealing with the Of®ceº and (1) Each inventor named in the application; that all associated with the ®ling and prosecution of (2) Each attorney or agent who prepares or prosecutes a patent application have a ªduty to disclose to the the application; and Of®ceº material information.