Materiality Under 37 CFR 1.56(b)

37 CFR 1.56  Duty to disclose information material to patent ability.

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(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.

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.

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Under the rule, information is not material unless it comes within the

definition of

37

CFR 1.56(b)(1)

or

(2)

. Generally, when information is

clearly cumulative or not material, there is no duty to disclose the information to the

Office. “[I]nformation 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.”

37

CFR 1.56(b)

. In close cases where the materiality or consistency

of the information is in question, the applicant should consider submitting this

information to the USPTO

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.”

37

CFR 1.56(b)

. In close cases where the materiality or consistency

of the information is in question, the applicant should consider submitting this

information to the USPTO. The Office believes that most applicants will wish to submit

the information even though they may not be required to do so, to strengthen the patent

and avoid the risks of an incorrect judgment on their part on materiality. The USPTO

holds those individuals subject to this duty to the highest standards.