Editing MPEP 2000

{{MPEP Chapter|1900|2100}}

'''<big>Chapter 2000 Duty of Disclosure</big>'''

<div class="noautonum">__TOC__</div>

==2000 [No Text]==

===2000.01 Introduction===

This Chapter deals with the duties owed toward the 
U.S. Patent and Trademark Office by the inventor and 
every other individual who is substantively involved 
in the preparation or prosecution of the application 
and who is associated with the inventor or the inventor’s 
assignee. These duties, of candor and good faith 
and disclosure, have been codified in 37 CFR 1.56, as 
promulgated pursuant to carrying out the duties of the 
Director under Sections 2, 3, 131, and 132 of Title 
35 of the United States Code.

==2001 Duty of Disclosure, Candor, and Good Faith==

{{Statute|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each pending claim until the claim is cancelled or withdrawn from 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material to the patentability of a claim that is cancelled or withdrawn 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)-(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:
<p style="padding-left: +40px;">(1)Prior art cited in search reports of a foreign patent 
office in a counterpart application, and</p>
<p style="padding-left: +40px;">(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.</p>
(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
<p style="padding-left: +40px;">(1)It establishes, by itself or in combination with other 
information, a prima facie case of unpatentability of a claim; or</p>
<p style="padding-left: +40px;">(2)It refutes, or is inconsistent with, a position the applicant 
takes in:</p>
<p style="padding-left: +60px;">(i)Opposing an argument of unpatentability relied on 
by the Office, or</p>
<p style="padding-left: +60px;">(ii)Asserting an argument of patentability.</p>

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.

(c)Individuals associated with the filing or prosecution of a 
patent application within the meaning of this section are:
<p style="padding-left: +40px;">(1)Each inventor named in the application;</p>
<p style="padding-left: +40px;">(2)Each attorney or agent who prepares or prosecutes the 
application; and</p>
<p style="padding-left: +40px;">(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.</p>
(d)Individuals other than the attorney, agent or inventor may 
comply with this section by disclosing information to the attorney, 
agent, or inventor.

(e)In any continuation-in-part application, the duty under 
this section includes the duty to disclose to the Office all information 
known to the person to be material to patentability, as defined 
in paragraph (b) of this section, 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.
|}

37 CFR 1.56 defines the duty to disclose information 
to the Office.

===2001.01 Who Has Duty To Disclose===

{{Statute|37 CFR 1.56. Duty to disclose information material to patentability.}}
{{Ellipsis}}
(c)Individuals associated with the filing or prosecution of a 
patent application within the meaning of this section are:
<p style="padding-left: +40px;">(1)Each inventor named in the application;</p>
<p style="padding-left: +40px;">(2)Each attorney or agent who prepares or prosecutes the application; and</p>
<p style="padding-left: +40px;">(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.</p>
|}

Individuals having a duty of disclosure are limited 
to those who are “substantively involved in the preparation 
or prosecution of 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.

The word “with” appears before “the assignee” and 
“anyone to whom there is an obligation to assign” to 
make clear that the duty 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. 

===2001.03 To Whom Duty of Disclosure Is Owed===

37 CFR 1.56(a) states that the “duty of candor and 
good faith” is owed “in dealing with the Office” and 
that all associated with the filing and prosecution of a 
patent application have a “duty to disclose to the 
Office” material information. This duty “in dealing 
with” and “to” the Office extends, of course, to all 
dealings which such individuals have with the Office, 
and is not limited to representations to or dealings 
with the examiner. For example, the duty would 
extend to proceedings before the Board of Patent 
Appeals and Interferences and the Office of the 
Commissioner for Patents.

===2001.04 Information Under 37 CFR 1.56(a)===

{{Statute|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)-(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:
<p style="padding-left: +40px;">(1)Prior art cited in search reports of a foreign patent 
office in a counterpart application, and</p>
<p style="padding-left: +40px;">(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.</p>
|}

The amendment to 37 CFR 1.56 was proposed to 
address criticism concerning a perceived lack of certainty 
in the materiality standard. The rule as promulgated 
will provide greater clarity and hopefully 
minimize the burden of litigation on the question of 
inequitable conduct before the Office, while providing 
the Office with the information necessary for 
effective and efficient examination of patent applications. 
37 CFR 1.56 has been amended to present a 
clearer and more objective definition of what information 
the Office considers material to patentability. The 
rules do not define fraud or inequitable conduct which 
have elements both of materiality and of intent.

The definition of materiality in 37 CFR 1.56 does 
not impose substantial new burdens on applicants, but 
is intended to provide the Office with the information 
it needs to make a proper and independent determination 
on patentability. It is the patent examiner who 
should make the determination after considering all 
the facts involved 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 1.56means 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, 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).

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.” The sentence does not create 
any new duty for applicants, but is placed in the text 
of the rule as helpful guidance to individuals who file 
and prosecute patent applications.

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. 
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, paragraph B(3)). 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. Applicants are provided certainty as to 
when information will be considered, and applicants 
will be informed when information is not considered. 
Note, however, that the Office may order or conduct 
reexamination proceedings based on prior art that was 
cited/considered in any prior related Office proceeding. 
See MPEP § 2242 and MPEP § 2258.01.

The Office does not believe that courts should, or 
will, find violations of the duty of disclosure because 
of unintentional noncompliance with 37 CFR 1.97and 1.98. If the noncompliance is intentional, however, 
the applicant will have assumed the risk that the 
failure to submit the information in a manner that will 
result in its being considered by the examiner may be 
held to be a violation.

The Office does not anticipate any significant 
change in the quantity of information cited to the 
Office. Presumably, applicants will continue to submit 
information for consideration by the Office in applications 
rather than making and relying on their own 
determinations of materiality. An incentive remains to 
submit the information to the Office because it will 
result in a strengthened patent and will avoid later 
questions of materiality and intent to deceive. In addition, 
the new rules will actually facilitate the filing of 
information since the burden of submitting information 
to the Office has been reduced by eliminating, in 
most cases, the requirement for a concise statement of 
the relevance of each item of information listed in an 
information disclosure statement. It should also be 
noted that 37 CFR 1.97(h) states that the filing of an 
information disclosure statement shall not be considered 
to be an admission that the information cited in 
the statement is, or is considered to be, material to 
patentability as defined in 37 CFR 1.56.

===2001.05 Materiality Under 37 CFR 1.56(b)===

{{Statute|37 CFR 1.56. Duty to disclose information material to 
patentability.}}
{{Ellipsis}}
(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
<p style="padding-left: +40px;">(1)It establishes, by itself or in combination with other 
information, a prima facie case of unpatentability of a claim; or</p>
<p style="padding-left: +40px;">(2)It refutes, or is inconsistent with, a position the applicant takes in:</p>
<p style="padding-left: +60px;">(i)Opposing an argument of unpatentability relied on by the Office, or</p>
<p style="padding-left: +60px;">(ii)Asserting an argument of patentability.</p>
|}

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.

Under the rule, information is not material unless it 
comes within the definition of 37 CFR 1.56(b)(1) or 
(2). If information is not material, there is no duty to 
disclose the information to the Office. Thus, it is theoretically 
possible for applicants to draft claims and a 
specification to avoid a prima facie case of obviousness 
over a reference and then to be able to withhold 
the reference from the examiner.

===2001.06 Sources of Information===

All individuals covered by 37 CFR 1.56 have a duty to disclose to 
the U.S. Patent and Trademark Office all material 
information they are aware of regardless of the source 
of or how they become aware of the information. Once an attorney, or an applicant has notice that information exists that appears material 
and questionable, that person cannot ignore that 
notice in an effort to avoid his or her duty to disclose.

Materiality controls whether information 
must be disclosed to the Office, not the circumstances 
under which or the source from which the information 
is obtained. If material, the information must be disclosed 
to the Office. The duty to disclose material 
information extends to information such individuals 
are aware of prior to or at the time of filing the application 
or become aware of during the prosecution 
thereof.

Such individuals may be or become aware of material 
information from various sources such as, for 
example:
*co-workers;
*trade shows;
*communications from or with competitors, potential infringers, or 
other third parties;
*related foreign applications;
**The inference that such prior art or other information is material is especially strong where it has been used in rejecting the same or similar claims in the foreign application or where it has been identified in some manner as particularly relevant
*prior or copending United States patent applications;
**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.
**For example, if a particular inventor has different applications pending in which similar subject matter but patentably indistinct claims are present that fact 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.
*related litigation; and
**Where the subject matter for which a patent is being sought is or has been involved in litigation, the existence of such litigation and any other material information arising therefrom must be brought to the attention of the U.S. Patent and Trademark Office. 
**Examples of such material information include evidence of possible prior public use or sales, questions of inventorship, prior art, allegations of "fraud," "inequitable conduct," and "violation of duty of disclosure."
**Another example of such material information is any assertion that is made during litigation which is contradictory to assertions made to the examiner.
*preliminary examination searches.

====2001.06(c)Information From Related Litigation====

Where a patent for which reissue is being sought is, 
or has been, involved in litigation which raised a 
question material to examination of the reissue application, 
such as the validity of the patent, or any allegation 
of "fraud," "inequitable conduct," or "violation 
of duty of disclosure," the existence of such litigation 
must be brought to the attention of the Office by the 
applicant at the time of, or shortly after, filing the 
application, either in the reissue oath or declaration, 
or in a separate paper, preferably accompanying the 
application, as filed. Litigation begun after filing of 
the reissue application should be promptly brought to 
the attention of the Office.

For example, the defenses raised against validity of 
the patent, or charges of "fraud" or "inequitable conduct" 
in the litigation, would normally be "material to 
the examination" of the reissue application.

Enough information should be submitted to clearly inform the 
Office of the nature of these issues so that the Office 
can intelligently evaluate the need for asking for further 
materials in the litigation. See MPEP § 1442.04.

====2001.06(d)Information Relating to Claims Copied From a Patent====

Where claims are copied or substantially copied 
from a patent, 37 CFR 1.607(c) requires applicant 
shall, at the time he or she presents the claim(s), identify 
the patent and the numbers of the patent claims.

==2002 Disclosure By Whom and How Made==

{{Statute|37 CFR 1.56. Duty to disclose information material to patentability.}}
{{Ellipsis}}
(d)Individuals other than the attorney, agent or inventor may 
comply with this section by disclosing information to the attorney, 
agent, or inventor.
|}

===2002.01 By Whom Made===

37 CFR 1.56(d) makes clear that information may 
be disclosed to the Office through an attorney or agent 
of record or through a pro se inventor, and that other 
individuals may satisfy their duty of disclosure to the 
Office by disclosing information to such an attorney, 
agent, or inventor who then is responsible for disclosing 
the same to the Office. Information that is not 
material need not be passed along to the Office.

===2002.02 Must be in Writing===

A disclosure under 37 CFR 1.56 must be in writing 
as prescribed by 37 CFR 1.2, and a copy of any such 
disclosure must be filed in each application or other 
proceeding to which the disclosure pertains (37 CFR 
1.4(b)).

==2003 Disclosure - When Made==

In reissue applications, applicants are encouraged 
to file information disclosure statements at the time of 
filing or within 2 months of filing, since reissue applications 
are taken up “special” (see MPEP § 1442 and 
§ 1442.03). However, in a reissue where waiver of the 
normal 2 month delay period of 37 CFR 1.176 is 
being requested (see MPEP § 1441), the statement 
should be filed at the time of filing the application, or 
as soon thereafter as possible.

The presumption of validity is generally strong 
when prior art was before and considered by the 
Office and weak when it was not.

===2003.01 Disclosure After Patent Is Granted===

I. BY CITATIONS OF PRIOR ART UNDER 37 CFR 1.501

Where a patentee or any member of the public 
(including private persons, corporate entities, and 
government agencies) has prior art patents or 
printed publications which the patentee or member of 
the public desires to have made of record in the patent 
file, patentee or such member of the public may file a 
citation of such prior art with the U.S. Patent and 
Trademark Office pursuant to 35 U.S.C. 301 and
37 CFR 1.501. Such citations and papers will be 
entered without comment by the Office. The Office 
generally does not  consider the citation and 
papers but merely places them of record in the patent 
file. Information which may be filed under 37 CFR 
1.501 is limited to prior art patents and printed publications. 
Any citations which include items other than 
patents and printed publications will not be entered in 
the patent file. See MPEP § 2202 through § 2208.

II.  BY REEXAMINATION

Where any person, including patentee, has prior art 
patents and/or printed publications which said person 
desires to have the U.S. Patent and Trademark Office 
consider after a patent has issued, such person may 
file a request for ex parte reexamination of the 
patent (see 37 CFR 1.510 and MPEP § 2209 through 
§ 2220). For a request for inter partes reexamination, 
see 37 CFR 1.913 and MPEP § 2609 through 
§ 2620.

==2004 Aids to Compliance With Duty of Disclosure==

The items listed below are offered as helpful suggestions of examples of possible procedures which could help 
avoid problems with the duty of disclosure.

*Use letters and questionnaires for applicants and others involved with the filing and prosecution of the application and checklists for themselves and applicants to ensure compliance with the duty of disclosure. 
**The letter generally explains the duty of disclosure and what it means to the inventor and assignee.
**The questionnaire asks the inventor and assignee questions about
***The origin of the invention and its point of departure from what was previously known and in the prior art,
***Possible public uses and sales,
***Prior publication, knowledge, patents, foreign patents, etc.
**The checklist is used by the attorney to ensure that the applicant has been informed of the duty of disclosure and that the attorney has inquired of and cited material prior art.
*Ask questions about inventorship. 
**Who is the proper inventor?
**Are there disputes or possible disputes about inventorship?
*Ask questions of the inventor about the disclosure of the best mode.
*Make certain that the inventor, especially a foreign inventor, recognizes his or her responsibilities in signing the oath or declaration.
*Carefully evaluate and explain to the applicant and others involved the scope of the claims, particularly the broadest claims.
**Ask specific questions about possible prior art which might be material in reference to the broadest claim or claims.
**It is desirable to pick out the broadest claim or claims and measure the materiality of prior art against a reasonably broad interpretation of these claims.
*Evaluate the materiality of prior art or other information from the viewpoint of whether it is the closest prior art or other information.
**A withheld reference may be highly material when it discloses a more complete combination of relevant features, even if those features are before the patent examiner in other references.
*See that prior art or other information cited in a specification or in an information disclosure statement is properly described and that the information is not incorrectly or incompletely characterized.
*See that inaccurate statements or inaccurate experiments are not introduced into the specification, either inadvertently or intentionally. 
*Do not rely on the examiner of a particular application to be aware of other applications belonging to the same applicant or assignee.
**It is desirable to call such applications to the attention of the examiner even if there is only a question that they might be "material to patentability" of the application the examiner is considering.
*When in doubt, it is desirable and safest to submit information.
*It may be desirable to submit information about 
prior uses and sales even if it appears that they may have been experimental, not involve the specifically claimed invention, or not encompass a completed invention.
*Submit information promptly.
**An applicant, attorney, or agent who is aware of prior art or other information and its significance should submit same early in prosecution, e.g., before the first action by the examiner, and not wait until after allowance.
**Potentially material information discovered late in the prosecution should be immediately submitted.
**That the issue fee has been paid is no reason or excuse for failing to submit information.
*Avoid the submission of long lists of documents if it can be avoided.
**Eliminate clearly irrelevant and marginally pertinent cumulative information.
*Watch out for continuation-in-part applications where intervening material information or documents may exist; particularly watch out for foreign patents and publications related to the parent application and dated more than 1 year before the filing date of the CIP.
*Watch out for information that might be deemed to be prior art under 35 U.S.C. 102(f) and (g).
**Prior art under 35 U.S.C. 102(f) may be available under 35 U.S.C. 103.
**Note also that evidence of prior invention under 35 U.S.C. 102(g) may be available under 35 U.S.C. 103.
*Watch out for information picked up by the inventors and others at conventions, plant visits, in-house reviews, etc.
*Make sure that all of the individuals who are subject to the duty of disclosure, such as spelled out in 37 CFR 1.56, are informed of and fulfill their duty.
*If information was specifically considered and discarded as not material, this fact might be recorded in an attorney’s file or applicant’s file, including the reason for discarding it. If judgment might have been bad or something might have been overlooked inadvertently, a note made at the time of evaluation might be an invaluable aid in explaining that the mistake was honest and excusable.
**Though such records are not required, they could be helpful in recalling and explaining actions in the event of a question of "fraud" or "inequitable conduct" raised at a later time.

==2005 Comparison to Requirement for Information==

Under 37 CFR 1.56, each individual associated 
with the filing and prosecution of a patent application 
has a duty to disclose on his or her own initiative 
information material to patentability under 37 CFR 1.56.

By contrast, under 37 CFR 1.105, an examiner or other Office employee is authorized to require, from parties identified in 37 CFR 1.56, information reasonably necessary to examine or treat a matter in 
an application.

The provisions of 37 CFR 1.105 are detailed in MPEP § 704 et seq. The criteria for requiring 
information under 37 CFR 1.56, i.e., materiality to the patentability of claimed subject matter, is substantially 
higher than the criteria for requiring information 
under 37 CFR 1.105, i.e., reasonable necessity to the 
examination of the application.

Thus, information 
required by the examiner pursuant to 37 CFR 1.105 would not necessarily be considered material to patentability 
in itself, but would be necessary to obtain a 
complete record from which a determination of patentability will be made.

==2010 Office Handling of Duty of Disclosure/Inequitable Conduct Issues==

Determination of inequitable conduct issues 
requires an evaluation of the intent of the party 
involved. While some court decisions have held that 
intent may be inferred in some circumstances, consideration 
of the good faith of the party, or lack thereof, 
is often required. In several court decisions, a high 
level of proof of intent to mislead the Office was 
required in order to prove inequitable conduct under 
37 CFR 1.56. See In re Harito, 847 F.2d 801, 
6 USPQ2d 1930 (Fed. Cir. 1988) and FMC Corp. v.
Manitowoc Co., 835 F.2d 1411, 5 USPQ2d 1112 (Fed. 
Cir. 1987). The Office is not the best forum in which 
to determine whether there was an “intent to mislead”; 
such intent is best determined when the trier of 
facts can observe demeanor of witnesses subjected to 
cross-examination. A court, with subpoena power, is 
presently the best forum to consider duty of disclosure 
issues under the present evidentiary standard for finding 
an “intent to mislead.” The court proceeding 
involves two participating adverse parties. This is not 
the case in the Office, since even “protesting” parties 
are not permitted to participate under the rules. Also, 
it is the courts and not the Office that are in the best 
position to fashion an equitable remedy to fit the precise 
facts in those cases where inequitable conduct is 
established. Furthermore, inequitable conduct is not 
set by statute as a criteria for patentability but rather is 
a judicial application of the doctrine of unclean hands 
which is appropriate to be handled by the courts rather 
than by an administrative body. Because of the lack of 
tools in the Office to deal with this issue and because 
of its sensitive nature and potential impact on a patent, 
Office determinations generally will not deter subsequent 
litigation of the same issue in the courts on 
appeal or in separate litigation. Office determinations 
would significantly add to the expense and time 
involved in obtaining a patent with little or no benefit 
to the patent owner or any other parties with an interest.

Accordingly, the Office does not investigate and 
reject original or reissue applications under 37 CFR 
1.56. Likewise, the Office will not comment upon 
duty of disclosure issues which are brought to the 
attention of the Office in original or reissue applications 
except to note in the application, in appropriate 
circumstances, that such issues are no longer considered 
by the Office during its examination of patent 
applications. Examination of lack of deceptive intent 
in reissue applications will continue but without any 
investigation of inequitable conduct issues. Applicant’s 
statement of lack of deceptive intent normally 
will be accepted as dispositive except in special circumstances 
such as an admission or judicial determination 
of fraud or inequitable conduct. See notice 
published in the Official Gazette at 1095 O.G. 16 
(October 11, 1988). See also MPEP § 2022.05.

Issues of fraud and/or inequitable conduct in an 
interference proceeding before the Board of Patent 
Appeals and Interferences (Board) will be considered 
by the Board if they are raised by way of preliminary 
motion for judgment under 37 CFR 1.633(a). The 
motion must be filed during the period set for filing 
preliminary motions (37 CFR 1.636(a)), or good 
cause (37 CFR 1.655(b)) must be shown as to why the 
issues of fraud and/or inequitable conduct were not 
timely raised during the preliminary motion period. 
Issues of fraud and/or inequitable conduct will not be 
considered in any interference in which the times for 
taking testimony or the times for filing briefs for final 
hearing have already been set, unless 'good cause' is 
shown under 37 CFR 1.655(b). An example of good 
cause would be where fraud or inequitable conduct is 
first discovered during taking of testimony. See notice 
published in the Official Gazette at 1133 O.G. 21 
(December 10, 1991).

==2012 Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure==

Questions of “fraud,” “inequitable conduct,” or 
violation of “duty of disclosure” or “candor and 
good faith” can arise in reissue applications.

REQUIREMENT FOR “ERROR WITHOUT 
ANY DECEPTIVE INTENTION” 

Both 35 U.S.C. 251 and 37 CFR 1.175 promulgated 
pursuant thereto require that the error must have 
arisen “without any deceptive intention.” In re Heany, 
1911 C.D. 138, 180 (1911), unequivocally states:

Where such a condition [fraudulent or deceptive intention] 
is shown to exist the right to reissue the patent is forfeited. 

Similarly, the court in In re Clark, 522 F.2d 623, 
627, 187 USPQ 209, 213 (CCPA 1975) indicated:

Reissue is not available to rescue a patentee who had 
presented claims limited to avoid particular prior art and 
then had failed to disclose that prior art . . . after that failure 
to disclose has resulted in invalidating of the claims.

It is clear that “fraud” cannot be purged through the 
reissue process. See conclusions of Law 89 and 91 in 
Intermountain Research and Eng’g Co. v. Hercules 
Inc., 171 USPQ 577, 631-32 (C.D. Cal. 1971).

Clearly, where several patents or applications stem 
from an original application which contained fraudulent 
claims ultimately allowed, the doctrine of unclean 
hands bars allowance or enforcement of any of the 
claims of any of the applications or patents. See Keystone 
Driller Co. v. General Excavator Co., 290 U.S. 
240, 245, 19 USPQ 228, 230 (1933); East Chicago 
Machine Tool Corp. v. Stone Container Corp., 
181 
USPQ 744, 748 (N.D. Ill.), modified, 185 USPQ 
210 (N.D. Ill. 1974). See also Chromalloy American 
Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 
USPQ 295 (D.Del. 1972) and Strong v. General Electric 
Co., 305 F. Supp. 1084, 162 USPQ 141 (N.D. Ga. 
1969), aff’d, 434 F.2d 1042, 168 USPQ 8 (5th Cir. 
1970), cert. denied, 403 U.S. 906 (1971) where fraud 
or inequitable conduct affecting only certain claims or 
only one of related patents was held to affect the other 
claims or patent. Clearly, “fraud” practiced or 
attempted in an application which issues as a patent is 
“fraud” practiced or attempted in connection with any 
subsequent application to reissue that patent. The reissue 
application and the patent are inseparable as far as 
questions of “fraud,” “inequitable conduct,” or “violation 
of the duty of disclosure” are concerned. See In 
re Heany, supra; and Norton v. Curtiss, 433 
F.2d 779, 
792, 167 USPQ 532, 543 (CCPA 1970), wherein the 
court stated:

We take this to indicate that any conduct which will 
prevent the enforcement of a patent after the patent issues 
should, if discovered earlier, prevent the issuance of the 
patent. 

Clearly, if a reissue patent would not be enforceable 
after its issue because of “fraud,” “inequitable conduct” 
or “violation of the duty of disclosure” during 
the prosecution of the patent sought to be reissued, the 
reissue patent application should not issue. Where 
no investigation is needed to establish such circumstances, 
an appropriate remedy would be to reject the 
claims in the application in accordance with 35 U.S.C. 
251. See MPEP § 1448.

The examiner is not to make any investigation as 
to the lack of deceptive intent requirement in reissue 
applications. Applicant's statement (in the oath or declaration) 
of lack of deceptive intent will be accepted 
as dispositive except in special circumstances such as 
an admission or judicial determination of fraud, 
inequitable conduct or violation of the duty of disclosure, 
where no investigation need be made and the 
fact of the admission or judicial determination exists 
per se. Also, any admission of fraud, inequitable conduct 
or violation of the duty of disclosure must be 
explicit, unequivocal, and not subject to other interpretation. 
Where a rejection is made based upon such 
an admission (see MPEP § 1448) and applicant 
responds with any reasonable interpretation of the 
facts that would not lead to a conclusion of fraud, 
inequitable conduct or violation of the duty of disclosure, 
the rejection should be withdrawn. Alternatively, 
if applicant shows that the admission noted by the 
examiner was not in fact an admission, the rejection 
should also be withdrawn. 

===2012.01 Collateral Estoppel===

The Supreme Court in Blonder-Tongue Labs., Inc. 
v. Univ. of Ill. Found., 402 U.S. 313, 169 USPQ 513 
(1971) set forth the rule that once a patent has been 
declared invalid via judicial inquiry, a collateral 
estoppel barrier is created against further litigation 
involving the patent, unless the patentee-plaintiff can 
demonstrate “that he did not have” a full and fair 
chance to litigate the validity of his patent in “the earlier 
case.” See also Ex parte Varga, 189 USPQ 209 
(Bd. App. 1973). As stated in Kaiser Industries Corp. 
v. Jones & Laughlin Steel Corp., 515 F.2d 964, 987, 
185 USPQ 343, 362 (3rd Cir. 1975):

In fashioning the rule of Blonder-Tongue, Justice 
White for a unanimous Court made it clear that a determination 
of patent invalidity, after a thorough and equitable 
judicial inquiry, creates a collateral estoppel barrier to further 
litigation to enforce that patent. 

Under 35 U.S.C. 251, the Director can reissue a 
patent only if there is “error without any deceptive 
intention.” The Director is without authority to 
reissue a patent when “deceptive intention” was 
present during prosecution of the parent application. 
See In re Clark, 522 F.2d 62, 187 USPQ 209 (CCPA 
1975) and In re Heany, 1911 C.D. 138, 180 (1911). 
Thus, the collateral estoppel barrier applies where 
reissue is sought of a patent which has been held 
invalid or unenforceable for “fraud” or “violation of 
duty of disclosure” in procuring of said patent. It was 
held in In re Kahn, 202 USPQ 772, 773 
(Comm’r Pat. 
1979):

Therefore, since the Kahn patent was held invalid, inter 
alia, for “failure to disclose material facts of which    
[Kahn] was aware” this application may be stricken 
under 37 CFR 1.56 via the doctrine of collateral estoppel 
as set forth in Blonder-Tongue, supra.

The Patent and Trademark Office . . . has found no 
clear justification for not adhering to the doctrine of collateral 
estoppel under Blonder-Tongue in this case. 
Applicant has had his day in court. He appears to have had 
a full and fair chance to litigate the validity of his patent.

See MPEP § 2259 for collateral estoppel in reexamination 
proceedings.

==2013 Protests Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure==

37 CFR 1.291 permits protests by the public against 
pending applications. 

Submissions under 37 CFR 1.291 are not limited to 
prior art documents such as patents and publications, 
but are intended to include any information, which in 
the protestor’s opinion, would make or have made the 
grant of the patent improper (see MPEP § 1901.02). 
This includes, of course, information indicating the 
presence of “fraud” or “inequitable conduct” or “violation 
of the duty of disclosure,” which will be entered 
in the application file, generally without comment 
other than to state that such information will not be 
considered (see MPEP § 2010). See MPEP 
§ 1901.06.

Protests should be in conformance with 37 CFR 
1.291(a) and (b), and include a statement of the 
alleged facts involved, the point or points to be 
reviewed, and the action requested. Any briefs or 
memoranda in support of the petition, and any affidavits, 
declarations, depositions, exhibits, or other material 
in support of the alleged facts, should accompany 
the protest.

==2014 Duty of Disclosure in Reexamination Proceedings==

As provided in 37 CFR 1.555, the duty of disclosure 
in both ex parte and inter partes reexamination 
proceedings applies to the patent owner. That 
duty is a continuing obligation on the part of the 
patent owner throughout the proceedings. However, 
issues of “fraud,” “ inequitable conduct,” or “violation 
of duty of disclosure” are not considered in reexamination. 
See MPEP § 2280 for ex partereexamination proceedings and MPEP § 2684 for 
inter partes reexamination proceedings. If questions 
of “fraud” or “inequitable conduct” or “violation of 
the duty of disclosure” are discovered during reexamination 
proceedings, the existence of such questions 
will be noted by the examiner in an Office action 
without further comment. See MPEP § 2258 for ex 
parte reexamination proceedings and MPEP § 2658for inter partes reexamination proceedings.

For the patent owner’s duty to disclose prior or concurrent 
proceedings in which the patent is or was 
involved, see MPEP § 2282 (for ex parte reexamination), 
§ 2686 (for inter partes reexamination), and 
§ 2001.06(c).

==2016 Fraud, Inequitable Conduct, or Violation of Duty of Disclosure Affects All Claims==

A finding of “fraud,” “inequitable conduct,” or violation 
of duty of disclosure with respect to any claim 
in an application or patent, renders all the claims 
thereof unpatentable or invalid. See Chromalloy 
American Corp. v. Alloy Surfaces Co., 339 F. Supp. 
859, 173 USPQ 295 (D.Del. 1972) and Strong v. General 
Electric Co., 305 F. Supp. 1084, 162 USPQ 141 
(N.D. Ga. 1969), aff’d, 434 F.2d 1042, 168 USPQ 8 
(5th Cir. 1970), cert. denied, 403 U.S. 906 (1971). In 
J. P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 
1561, 223 USPQ 1089, 1093-94 (Fed. Cir. 1984), the 
court stated:

Once a court concludes that inequitable conduct 
occurred, all the claims __ not just the particular claims 
in which the inequitable conduct is directly connected __
are unenforceable. See generally, cases collected in 4 
Chisum, PATENTS, paragraph 19.03[6] at 19-85 n. 10 
(1984). Inequitable conduct “goes to the patent right as a 
whole, independently of particular claims.” In re Clark 
522 F.2d 623, 626, 187 USPQ 209, 212 (CCPA).

The court noted in footnote 8 of Stevens:

In In re Multiple Litigation Involving Frost Patent, 
540 F.2d 601, 611, 191 USPQ 241, 249 (3rd. Cir. 1976), 
some claims were upheld despite nondisclosure with 
respect to others. The case is not precedent in this court.

As stated in Gemveto Jewelry Co. v. Lambert Bros., 
Inc., 542 F. Supp. 933, 943, 216 USPQ 976, 984 
(S. D. N. Y. 1984) (quoting Patent Law Perspectives, 
1977 Developments, § G.1 [1]-189): 

The gravamen of the fraud defense is that the patentee 
has failed to discharge his duty of dealing with the examiner 
in a manner free from the taint of “fraud or other 
inequitable conduct.” If such conduct is established in 
connection with the prosecution of a patent, the fact that 
the lack of candor did not directly affect all the claims in 
the patent has never been the governing principle. It is the 
inequitable conduct that generates the unenforceability of 
the patent and we cannot think of cases where a patentee 
partially escaped the consequences of his wrongful 
acts by arguing that he only committed acts of omission or 
commission with respect to a limited number of claims. It 
is an all or nothing proposition. [Emphasis in original.]

===2022.05 Determination of “Error Without Any Deceptive Intention”===

If the application is a reissue application, the action 
by the examiner may extend to a determination as to 
whether at least one “error” required by 35 U.S.C. 251has been alleged, i.e., identified. Further, the examiner 
should determine whether applicant has averred in the 
reissue oath or declaration, as required by 37 CFR 
1.175(a)(2), (b)(1), and (b)(2), that all “errors” arose 
“without any deceptive intention.” However, the 
examiner should not normally comment or question 
as to whether  the averred statement as to lack of 
deceptive intention appears correct or true. See 
MPEP § 1414.