Under United States Patent and Trademark Office (USPTO) Rule 56 (37 Code of Federal Regulations §1.56), every individual associated with the filing and prosecution of a patent application has a general “duty of candor and good faith” when dealing with the USPTO.  Included in this general duty is the specific duty to disclose to the USPTO all information known to be material to the patentability of an invention claimed in the application.  The USPTO is responsible for examining patent applications and making a determination of whether a claimed invention meets the legal requirements for patentability.  Granting a patent will create an extended period of exclusivity for the patent owner, which is considered to provide an incentive for innovation and the reward for the inventor’s contribution to technological progress.  Rule 56 helps to ensure that the USPTO examiner has available to him or her all the information that should be taken into consideration when judging patentability, as not all relevant information may be readily obtainable or identifiable from other sources. 

 

Information is material to patentability when it establishes, by itself or in combination with other information, that a claimed invention may be unpatentable.  It is also material if it refutes, or is inconsistent with, a position the applicant takes asserting an argument of patentability or in opposing an argument of unpatentability relied on by the USPTO.

However, information which is cumulative to information that is already of record in an application is not material to patentability.  If there is any doubt as to whether certain information is cumulative or whether it could be interpreted as material to patentability, it is best to submit it to ensure compliance with the duty of disclosure. 

 

Typically, the information submitted to the USPTO is in the form of patents, published patent applications, journal articles, product brochures, technical datasheets and documents such as search and examination reports generated in the course of prosecuting other related applications, both U.S. and foreign.  However, other types of information, including even certain trade secrets and commercial development activity, might also need to be submitted.

 

 

Information material to patentability is usually submitted through an Information Disclosure Statement (IDS).  The IDS will contain a listing of documents being submitted and copies of documents other than U.S. patents and applications, possibly together with an explanation of certain information being submitted.  Although it is possible to submit an IDS after examination has begun, there are often fees associated with late submissions and, as explained earlier, past certain points in the examination the USPTO may not accept and review the submitted information unless the application is refiled.  For these reasons, it is recommended that an initial IDS be submitted within three months of filing an application and that a supplemental IDS be filed as soon as additional relevant information becomes known.

 

 

 

The duty of disclosure does not include a duty to carry out a search of prior art literature and patents.  However, performing such a search may be helpful in making an assessment of whether an invention is likely to be patentable, before making an investment in the preparation and filing of a patent application.  (See All Patent Searches Are Not Created Equal)

 

 

All of the following persons are subject to the duty of disclosure:

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 (such persons may comply by disclosing information to the attorney, agent, or inventor).

 

 

The duty to disclose begins when a patent application is filed and continues until that application is actually granted as a patent.  The duty does not end when an application is allowed or even when the issue fee is paid.  Therefore, if new information that is considered material to patentability becomes known late in the prosecution of an application but before its grant as a patent, it may be necessary to refile the application for the purpose of submitting such information to the USPTO for consideration.  Such information may come to light, for example, through the examination of counterpart applications in other countries, which often lag behind the U.S. examination.  Although refiling the application will incur some additional short term costs, it will help reduce the possibility that the granted patent could be successfully challenged later in litigation when the owner seeks to enforce it against an infringer.

 

 

Typically, a possible failure to comply with the duty of disclosure only becomes evident during patent litigation.  An accused infringer will have access, through the discovery process, to the patent owner’s records and is also able to take the deposition of the inventor and employees and agents of the patent owner.  Evidence may be obtained which shows that such persons were aware of certain information possibly material to patentability which was not submitted to the USPTO.  This evidence may be sufficient for the accused infringer to raise an affirmative defense of inequitable conduct (“fraud on the Patent Office”) which, if successful, would render the patent unenforceable.  A finding of inequitable conduct can also provide a basis for awarding attorney fees to the accused infringer, which could be substantial.