# MPEP § 2001.04: Information Under 37 CFR 1.56(a)

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2001.04

## Section

- **Citation:** MPEP § 2001.04
- **Heading:** Information Under 37 CFR 1.56(a)
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 2000 - Duty of Disclosure / MPEP § 2001.04

## Text

37 CFR 1.56  Duty to disclose information material to patentability.
(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until the claim is cancelled or withdrawn from consideration, or the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claim that is cancelled or withdrawn from consideration need not be submitted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.
*****
The language of
37 CFR 1.56
(and
37 CFR 1.555
)
emphasizes that there is a duty of candor and good faith which is broader than the duty
to disclose material information.
37 CFR 1.56
further states that “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.” Specifically, the duty of candor and good faith, and by
extension the duty to disclose, applies to positions taken by applicants or parties
involving the claimed subject matter.
If a party to a USPTO proceeding discovers that an
earlier position taken in a submission to the USPTO or another Government agency was
incorrect or inconsistent with other statements made by the party, the party must
promptly correct the record. See, e.g.,
In re Tendler,
Proceeding No.
D2013-17 (USPTO Jan
e, applies to positions taken by applicants or parties
involving the claimed subject matter.
If a party to a USPTO proceeding discovers that an
earlier position taken in a submission to the USPTO or another Government agency was
incorrect or inconsistent with other statements made by the party, the party must
promptly correct the record. See, e.g.,
In re Tendler,
Proceeding No.
D2013-17 (USPTO Jan. 1, 2014) (suspending a practitioner for four years for failure to
correct the written record after learning of inaccuracies in a declaration the
practitioner had filed). In the context of prosecution, an applicant must disclose to
the USPTO any information that 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. See
37 CFR
1.56(b)(2)
. Patent owners may bring information, including prior
art and incorrect or inconsistent positions, to the attention of the USPTO through
supplemental examination,
ex parte
reexamination, reissue
applications, or submissions under
37 CFR 1.501
. During prosecution,
third parties may have an opportunity to disclose information to the USPTO through third
party submissions under
37 CFR 1.290
and protests under
37 CFR
1.291
. After issuance, third parties may disclose information
directed to issued patents to the USPTO via submissions under
37 CFR 1.501
, or
in
ex parte
reexamination. A finding of “fraud,” “inequitable
conduct,” or violation of duty of disclosure through bad faith or intentional misconduct
with respect to any claim in an application or patent, renders all the claims thereof
unpatentable or invalid. See
MPEP § 2016
.
The Office strives to issue valid patents. The Office has both an
obligation not to unjustly issue patents and an obligation not to unjustly deny patents.
Innovation and technological advancement are best served when an inventor is issued a
patent with the scope of protection that is deserved
aim in an application or patent, renders all the claims thereof
unpatentable or invalid. See
MPEP § 2016
.
The Office strives to issue valid patents. The Office has both an
obligation not to unjustly issue patents and an obligation not to unjustly deny patents.
Innovation and technological advancement are best served when an inventor is issued a
patent with the scope of protection that is deserved. The rules serve to remind
individuals associated with the preparation and prosecution of patent applications of
their duty of candor and good faith in their dealings with the Office, and will aid the
Office in receiving, in a timely manner, the information it needs to carry out effective
and efficient examination of patent applications. Moreover, an incentive exists to
submit material information to the Office because it may result in enhanced patent
quality and may avoid later questions of materiality and intent to deceive.
The definition of materiality in
37 CFR 1.56
is intended to provide
the Office with the information it needs in order for the examiner to make a proper and
independent determination on patentability. The patent examiner should make the
patentability determination after considering the relevant facts properly of record in
the particular case.
37 CFR
1.56
states that each individual associated with the filing and
prosecution of a patent application has a duty to disclose all information known to that
individual to be material to patentability as defined in the section. Thus, the duty
applies to contemporaneously or presently known information. The fact that information
was known years ago does not mean that it was recognized that the information is
material to the present application.
The term “information” as used in
37 CFR 1.56
means all of the kinds
of information required to be disclosed and includes any information which is “material
to patentability.” Materiality is defined in
37 CFR 1.56(b)
and discussed herein
at
MPEP
§ 2001.05
The fact that information
was known years ago does not mean that it was recognized that the information is
material to the present application.
The term “information” as used in
37 CFR 1.56
means all of the kinds
of information required to be disclosed and includes any information which is “material
to patentability.” Materiality is defined in
37 CFR 1.56(b)
and discussed herein
at
MPEP
§ 2001.05
. In addition to prior art such as patents and
publications,
37 CFR
1.56
includes, for example, information on enablement, possible
prior public uses, sales, offers to sell, derived knowledge, prior invention by another,
inventorship conflicts, litigation statements, and the like. “Materiality is not limited
to prior art but embraces
any
information that a reasonable examiner
would be substantially likely to consider important in deciding whether to allow an
application to issue as a patent.”
Bristol-Myers Squibb Co. v. Rhone-Poulenc
Rorer, Inc.
, 326 F.3d 1226, 1234, 66 USPQ2d 1481, 1486 (Fed. Cir. 2003)
(emphasis in original) (finding article which was not prior art to be material to
enablement issue).
Patent examiners also have the ability to require
submission of information that may be reasonably necessary to properly examine or treat
a matter in a pending or abandoned application, but not necessarily “material to
patentability.”
37
CFR 1.105(a)(1)
. The information that must be submitted to comply
with a requirement for information under
37 CFR 1.105
may not be material to
patentability in itself under
37 CFR 1.56
, but it is necessary to
obtain a complete record from which a determination of patentability may be made. See
MPEP §
704.12(a)
. Therefore, when an examiner has a reasonable basis
to conclude that an individual identified under
37 CFR 1.56(c)
or any assignee has
information that would aid in the examination of the application or treatment of some
matter, the examiner may require submission of information that is not necessarily
material to patentability
ch a determination of patentability may be made. See
MPEP §
704.12(a)
. Therefore, when an examiner has a reasonable basis
to conclude that an individual identified under
37 CFR 1.56(c)
or any assignee has
information that would aid in the examination of the application or treatment of some
matter, the examiner may require submission of information that is not necessarily
material to patentability. This requirement could include statements made or information
submitted to other Government agencies such as the FDA. See
MPEP §
2015
. For example, when examining a claim directed to a
process of manufacturing a particular drug product that was effectively filed more than
one year after FDA approval of the drug product, an examiner may appropriately require
an applicant to submit to the USPTO information submitted to the FDA (e.g., in a New
Drug Application or Biologics License Application) on how the drug product was
manufactured.
The term “information” is intended to be all encompassing, similar to
the scope of the term as discussed with respect to
37 CFR 1.291(a)
(see
MPEP
§ 1901.02
).
37 CFR 1.56(a)
also states: “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.”
It should be noted that the rules are
not
intended
to require information
favorable
to patentability such as, for
example, evidence of commercial success of the invention. Similarly, the rules are not
intended to require, for example, disclosure of information concerning the level of
skill in the art for purposes of determining obviousness.
37 CFR
1.56(a)
states that the duty to disclose information exists until
the application becomes abandoned
d
to require information
favorable
to patentability such as, for
example, evidence of commercial success of the invention. Similarly, the rules are not
intended to require, for example, disclosure of information concerning the level of
skill in the art for purposes of determining obviousness.
37 CFR
1.56(a)
states that the duty to disclose information exists until
the application becomes abandoned. The duty to disclose information, however, does not
end when an application becomes allowed but extends until a patent is granted on that
application. The rules provide for information being considered after a notice of
allowance is mailed and before the issue fee is paid (
37 CFR 1.97(d)
)
(see
MPEP § 609.04(b),
subsection III
). The rules also provide for an application to
be withdrawn from issue:
(A) because one or more claims are unpatentable (
37 CFR
1.313(c)(1)
);
(B) for express abandonment so that information may be considered in
a continuing application before a patent issues (
37 CFR
1.313(c)(3)
); or
(C) for consideration of a request for continued examination (RCE)
under
37 CFR
1.114
(
37 CFR 1.313(a)
and
(c)(2)
). Note that RCE practice does not apply to utility
or plant applications filed before June 8, 1995 or to design applications. See
MPEP §
706.07(h)
.
See
MPEP
§ 1308
for additional information pertaining to withdrawal of
an application from issue.
In a continuation-in-part application, individuals covered by
37 CFR
1.56
have a duty to disclose to the Office all information known
to be material to patentability 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. See
37 CFR 1.56(e)
.
37 CFR
1.56
provides that the duty of disclosure can be met by submitting
information to the Office in the manner prescribed by
37 CFR 1.97
and
1.98
. See
MPEP § 609
et seq
tion known
to be material to patentability 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. See
37 CFR 1.56(e)
.
37 CFR
1.56
provides that the duty of disclosure can be met by submitting
information to the Office in the manner prescribed by
37 CFR 1.97
and
1.98
. See
MPEP § 609
et seq
. Applicants are provided certainty as to when information will
be considered, and applicants will be informed when information is not considered. Note,
however, if even a document was cited to or considered in a prior examination or related
Office proceeding, the Office may order reexamination based on the document if it raises
a substantial new question of patentability. See
MPEP § 2242
and
MPEP § 2258.01
.
37 CFR 1.555
provides for the duty
of disclosure in reexamination proceedings. For a discussion of information material to
patentability in a reexamination proceeding, see
MPEP § 2280
or
MPEP § 2684
. For
supplemental examination and any
ex parte
reexamination proceeding
ordered under
35 U.S.C. 257
, information material
to patentability is defined by
37 CFR 1.56
. See
37 CFR
1.625(d)(4)
and
MPEP §
2820
.

## Nearby sections

- [MPEP § 2000.01 Introduction](https://www.frixlaw.com/law-library/statutes/MPEP_S2000.01.md)
- [MPEP § 2001 Duty of Disclosure, Candor, and Good Faith](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.md)
- [MPEP § 2001.01 Who Has Duty To Disclose](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.01.md)
- [MPEP § 2001.02 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.02.md)
- [MPEP § 2001.03 To Whom Duty of Disclosure Is Owed](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.03.md)
- [MPEP § 2001.04 Information Under 37 CFR 1.56(a)](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.04.md)
- [MPEP § 2001.05 Materiality Under 37 CFR 1.56(b)](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.05.md)
- [MPEP § 2001.06 Sources of Information under 37 CFR 1.56](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.06.md)
- [MPEP § 2001.06(a) Prior Art Cited in Related Foreign Applications](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.06(a).md)
- [MPEP § 2001.06(b) Information Relating to or From Copending United States Patent Applications](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.06(b).md)
- [MPEP § 2001.06(c) Information From Related Litigation and/or Trial Proceedings](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.06(c).md)
- [MPEP § 2001.06(d) Information Relating to Claims Copied From a Patent](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.06(d).md)
- [MPEP § 2001.06(e) Information Relating to Regulatory Review](https://www.frixlaw.com/law-library/statutes/MPEP_S2001.06(e).md)
- [MPEP § 2002 Disclosure — By Whom and How Made](https://www.frixlaw.com/law-library/statutes/MPEP_S2002.md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S2001.04. Check the current official text before relying on it. Not legal advice.