Brief Summary:
This chapter deals with the duties of disclosure.
Each inventor and every other individual who is substantially involved in the preparation or prosecution of the application has a duty of disclosure.
These duties consist of candor, good faith and the duty to disclose all relevant materials to the PTO.
Key Terms:
Collateral Estoppel | Collateral Estoppel prevents a party from re-litigating an issue that has already been judged in a court of law, ensuring that once a court has decided an issue of fact or law necessary to its judgment, that decision may preclude re-examination of the same issue in a different case involving the same parties. |
Duty Disclose | The Duty to Disclose requires applicants to inform the patent office of all known relevant prior art and information that may affect the patentability of their invention during the examination process. |
Inequitable Conduct | Inequitable Conduct refers to an applicant’s intentional misleading or withholding of material information from the patent office during prosecution, which can render a patent unenforceable. |
37 CFR (Code of Federal Regulations):
37 CFR 1.56 – Duty to disclose information material to patentability. |
37 CFR 1.56 mandates that individuals associated with the filing and prosecution of a patent application must disclose all information known to be material to the patentability of the invention to the United States Patent and Trademark Office. |
Quick Statistics:
Number of Pages: 22 pgs
Sections: 2000 – 2022
List of Sections:
2000 | Duty of Disclosure | |
• 2000.01 Introduction | ||
2001 | Duty of Disclosure, Candor, and Good Faith | |
• 2001.01 Who Has Duty To Disclose • 2001.02 [Reserved] • 2001.03 To Whom Duty of Disclosure Is Owed • 2001.04 Information Under 37 CFR 1.56(a) • 2001.05 Materiality Under 37 CFR 1.56(b) • 2001.06 Sources of Information under 37 CFR 1.56 | ||
• 2001.06(a) Prior Art Cited in Related Foreign Applications • 2001.06(b) Information Relating to or From Copending United States Patent Applications • 2001.06(c) Information From Related Litigation and/or Trial Proceedings • 2001.06(d) Information Relating to Claims Copied From a Patent • 2001.06(e) Information Relating to Regulatory Review | ||
2002 | Disclosure — By Whom and How Made | |
• 2002.01 By Whom Made • 2002.02 Must be in Writing | ||
2003 | Disclosure __ When Made | |
• 2003.01 Disclosure After Patent Is Granted | ||
2004 | Aids to Compliance With Duty of Disclosure | |
2005 | Comparison to Requirements for Information | |
2006 – 2009 | [Reserved] | |
2010 | Office Handling of Duty of Disclosure/Inequitable Conduct Issues | |
2011 | Correction of Errors in Application | |
2012 | Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure | |
• 2012.01 Collateral Estoppel | ||
2013 | Protests Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure | |
2014 | Duty of Disclosure in Reexamination Proceedings and Supplemental Examination | |
2015 | Duties of Disclosure and Reasonable Inquiry Arise in Dealings With Other Government Agencies | |
2016 | Fraud, Inequitable Conduct, or Violation of Duty of Disclosure Affects All Claims | |
2017 – 2022 | [Reserved] |