Individuals and entities that apply for patents under US law have a number of duties that they owe to the U.S. Patent & Trademark Office (“USPTO”) and to the public generally. Among the most important is called the “duty of disclosure, candor, and good faith. See 37 C.F.R. 1.56. In brief, this involves the duty to disclose information that is “material” to unpatentability and to not falsify, obscure, or omit information or otherwise engage in fraud with respect to patent applications. The policies behind this duty are the concepts that patents are important to the “public interest,” that the work of the USPTO should be done efficiently and effectively, and that patents should not be granted where fraud or bad faith has been attempted.

The duty applies to everyone substantially involved in filing and prosecuting a patent application including the inventor, applicants, agents, and their attorneys. The duty is a continuing one so that, if after an application is filed, material information with respect to unpatentability becomes known, that information must be disclosed. The duty of candor and good faith is broader than a simple duty to disclose. If there is some doubt or question about whether the information is material to an issue of unpatentability, the duty of candor requires disclosure.

Violation of the duty can result in denial of the patent and personal punishments. For example, in fiscal year 2016, 32 attorneys and patent agents were given disciplinary actions for violations of their duty of candor. Two were reprimanded, 17 were suspended, and 13 were barred from patent practice. See information here.

Information is material if it bears on the issue of unpatentability. Information must be disclosed under the following circumstances:

• If the information establishes, by itself or in combination with other information, a prima facie case of unpatentability or
• The information refutes, or is inconsistent with, a position an applicant takes in asserting unpatentability or opposing another person’s argument of unpatentability

As can be seen, the duty of candor applies to all actions and positions taken with the USPTO. That is, the duty of candor is not just for those applying for patents, but extends to those that might oppose patent applications. This aspect of the duty of candor protects the USPTO’s policy of not unjustly granting patents or denying them. Interestingly enough, as the regulations state, the duty of candor does not require disclosure of information supportive of patentability such as, for example, evidence of commercial success of the invention.

As the USPTO regulations explains, examples of “materiality” include prior art such as patents and publications, prior art cited in search reports of a foreign patent office, information on enablement, possible prior public uses, sales, offers to sell, derived knowledge, prior invention by another and inventorship conflicts. As an example, in the case of Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226 (US Fed. Cir. 2003), the court held that a published article was material to the issue of enablement even though it was not considered prior art. For more information or if you have questions about applying for a patent, contact the patent lawyers at Revision Legal at 231-714-0100.