Show ‘Em What You Got: Patents and the Duty of Disclosure

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An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
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Have you ever found out about something that you wish you could forget? The forgetting presents a particular conundrum for inventors with applications at the US Patent and Trademark Office. Inventors are often the most knowledgeable people about their inventions and what others are doing in the competing industry. And sometimes an inventor stumbles across a material reference that could decrease his chance of securing a patent. In such a case, what must the inventor do?
The Statute: 37 CFR 1.56 Duty to Disclose
The US Code of Federal Regulations creates a duty to disclose that is defined in part as “a duty to disclose to the Office all information known to that individual to be material to patentability….  [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.”
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The inventor thus has a duty to disclose that he cannot ignore. The rational for this is also given in the regulation, which reminds us that patents are affected with the public interest and “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.”
Consequences of Failing to Meet The Duty of Disclosure 
To inventors, the duty of disclosure often seems counterintuitive. Why should an inventor “help” the patent office do its job? If an inventor finds the public interest rationale to be wanting, he should understand the consequence of failing to meet his obligations.
Failure to comply with the duty of disclosure may result in a party asserting that a patent was secured through inequitable conduct. Inequitable conduct requires proof of:

  1. an affirmative misrepresentation of material fact, failure to disclose material information, or submission of false material information, and
  2. intent to deceive the patent office by the act under (1).

The consequence of having been found to engage in inequitable conduct is that the patent may be unenforceable, and it may allow an accused defendant to argue that it deserves its attorney fees.
Who Has the Duty to Disclose?
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Every person associated with the filing and prosecution of a patent application—while it is pending—has a duty of candor and good faith in dealing with the patent office and, therefore, a duty to disclose material information. These people include inventors, attorneys/agents, and any other persons substantially involved with the application. 
What is Material Information?
Material information includes references (publications, patents, websites, etc.) thata reasonable examiner would be likely to consider important in deciding whether to allow an application to issue as a patent. These include office actions in related and unrelatedapplications.
Material information extends to representations about entity status (for paying lesser fees) and  statements to speed patent prosecution.
The Manual of Patent Examining Procedure sets forth several categories of references to consider citing to meet the duty of disclosure:

  1. References cited in related foreign applications
  2. Information relating to or from co-pending US applications
  3. Information from related litigation

What is Not Material Information?
It is safest to assume that everything is material, but information that is not as pertinent as that before the examiner or merely cumulative of information already submitted need not be cited.
If you are in doubt about whether to disclose something, contact your patent attorney who will help you decide.
If you have questions, contact me.
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