Why doesn’t the USPTO investigate duty of disclosure issues during patent examination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The USPTO does not investigate duty of disclosure issues during patent examination for several reasons:

• Lack of appropriate tools: The USPTO lacks the necessary tools to effectively deal with these complex issues.
• Sensitive nature: Duty of disclosure and inequitable conduct are sensitive matters with potential significant impact on a patent.
• Judicial doctrine: Inequitable conduct is a judicial application of the doctrine of unclean hands, which is more appropriately handled by courts.
• Cost and time: Investigating these issues would significantly increase the expense and time involved in obtaining a patent.
• Limited benefit: Such investigations would provide little to no benefit to the patent owner or other interested parties.

As stated in MPEP 2010: “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, examiner determinations generally will not deter subsequent litigation of the same issue in the courts on appeal or in separate litigation.”