What should inventors know about the USPTO’s approach to duty of disclosure issues?

Inventors should be aware of the following key points regarding the USPTO’s approach to duty of disclosure issues:

• The USPTO does not investigate or reject applications based on duty of disclosure violations during examination.
• Examiners will not comment on duty of disclosure issues brought to their attention, except to note that such issues are not considered during examination.
• The duty of disclosure, as outlined in 37 CFR 1.56, still applies to all individuals associated with the filing and prosecution of a patent application.
• Failure to comply with the duty of disclosure can have serious consequences in later litigation, potentially rendering a patent unenforceable.
• Courts, not the USPTO, are responsible for determining and addressing inequitable conduct issues.

As stated in MPEP 2010: “Accordingly, the examiner does not investigate and reject original or reissue applications under 37 CFR 1.56.” Inventors should remain diligent in fulfilling their duty of disclosure throughout the patent process, even though the USPTO does not actively enforce it during examination.

To learn more:

• inventors
• duty of disclosure
• USPTO policy
• patent examination
• 37 CFR 1.56