Who Has Duty To Disclose

37 CFR 1.56  Duty to disclose information material to patentability.

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(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.

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

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(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, with the assignee or with anyone to whom there is an

obligation to assign the application.

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The duty to disclose applies to matters pending before the USPTO and

extends broadly to “[e]ach individual associated with the filing and prosecution of a

patent application” and “[e]ach individual associated with the patent owner in a

reexamination proceeding.”

37 CFR 1.56(c)

and

1.555(a)

. For

patent applications, including reissue applications, these individuals include each

inventor named in the application, each attorney or agent who prepares or prosecutes the

application, and “[e]very 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.” This is intended to make clear that the duty does not extend to typists,

clerks, and similar personnel who assist with an application

es the

application, and “[e]very 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.” This is intended to make clear that the duty does not extend to typists,

clerks, and similar personnel who assist with an application. For reexamination

proceedings, these individuals include “the patent owner, each attorney or agent who

represents the patent owner, and every other individual who is substantively involved on

behalf of the patent owner in a reexamination proceeding.”

37 CFR

1.555(a)

.

The duty of disclosure applies only to individuals, not to

organizations. For instance, the duty of disclosure would not apply to a corporation or

institution as such. However, it would apply to individuals within the corporation or

institution who were substantively involved in the preparation or prosecution of the

application, and actions by such individuals may affect the rights of the corporation or

institution.