Information Relating to or From Copending United States Patent Applications

The individuals covered by

37 CFR 1.56

have a duty to bring

to the attention of the examiner, or other Office official involved with the

examination of a particular application, information within their knowledge as to

other copending United States applications which are “material to patentability” of

the application in question. This may include providing the identification of pending

or abandoned applications filed by at least one of the inventors or assigned to the

same assignee as the current application that disclose similar subject matter that

are not otherwise identified in the current application. As set forth by the court in

Armour & Co. v. Swift & Co.

, 466 F.2d 767, 779, 175

USPQ 70, 79 (7th Cir. 1972):

[W]e think that it is unfair to the busy examiner, no matter how

diligent and well informed he may be, to assume that he retains details of every

pending file in his mind when he is reviewing a particular application . . . [T]he

applicant has the burden of presenting the examiner with a complete and accurate

record to support the allowance of letters patent.

See also

MPEP § 2004

, paragraph 9.

Accordingly, the individuals covered by

37 CFR 1.56

cannot assume that the examiner of a particular application is necessarily aware of

other applications which are “material to patentability” of the application in

question, but must instead bring such other applications to the attention of the

examiner. See

Regeneron Pharm., Inc. v. Merus B.V.

, 144 F. Supp.

3d 530, 560 (S.D.N.Y. 2015), and

Dayco Prod., Inc. v. Total Containment,

Inc.,

329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003).

For example, if a particular inventor has different applications pending which

disclose similar subject matter but claim patentably indistinct inventions, the

existence of other applications must be disclosed to the examiner of each of the

involved applications

, 560 (S.D.N.Y. 2015), and

Dayco Prod., Inc. v. Total Containment,

Inc.,

329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003).

For example, if a particular inventor has different applications pending which

disclose similar subject matter but claim patentably indistinct inventions, the

existence of other applications must be disclosed to the examiner of each of the

involved applications. Similarly, the prior art references from one application must

be made of record in another subsequent application if such prior art references are

“material to patentability” of the subsequent application. See

Dayco

Prod.,

329 F.3d at 1369, 66 USPQ2d at 1808.

If the application under examination is identified as a

continuation, divisional, or continuation-in-part of an earlier application, the

examiner will consider the prior art properly cited in the earlier application. See

MPEP §

609

and

MPEP § 719.05

, subsection (II)(A),

example J. The examiner must indicate in the first Office action whether the prior

art in a related earlier application has been reviewed. Accordingly, no separate

citation of the same prior art need be made in the later application, unless

applicant wants a listing of the prior art printed on the face of the patent.