How should applicants disclose information that refutes or is inconsistent with their patent application?

Applicants have a duty to disclose information that refutes or is inconsistent with positions taken in their patent application. According to MPEP 2011:

“Applicants should disclose to the USPTO any information that 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.”

This requirement is based on 37 CFR 1.56(b)(2). When disclosing such information, applicants should:

• Expressly advise the USPTO of the existence of the information
• State specifically where the inconsistency or refutation resides
• File the correction “openly”, such as under separate cover, to ensure full consideration by the examiner

It’s not sufficient to merely supply accurate facts without calling attention to untrue or misleading assertions. The goal is to ensure transparency and enable the examiner to formulate accurate conclusions.

To learn more:

• disclosure
• inconsistent information
• USPTO
• patent application
• duty of candor