Duty of Disclosure, Candor, and Good Faith

37 CFR 1.56  Duty to disclose information material to patentability.

[Editor Note: Para. (c)(3) below is applicable only to patent

applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.]

(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withdrawn from consideration, or the application becomes abandoned.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material to the patentability of a claim that is cancelled or withdrawn from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)

-

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.

ntability 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.

37 CFR 1.56 (pre-AIA) Duty to disclose information material to

patentability.

[Editor Note: Para. (c)(3) below is not applicable to patent

applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16,

2012.]

*****

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.

37 CFR 1.56 (pre-AIA) Duty to disclose information material to

patentability.

[Editor Note: Para. (c)(3) below is not applicable to patent

applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16,

2012.]

*****

(c) Individuals associated with the filing or

prosecution of a patent application within the meaning of this section are:

*****

(3) Every other person who is substantively

involved in the preparation or prosecution of the application and who is

associated with the inventor, with the assignee or with anyone to whom there

is an obligation to assign the application.

*****

37 CFR

1.56

defines the duty to disclose information to the Office.