MPEP § 2001.01 — Who Has Duty To Disclose (Annotated Rules)
§2001.01 Who Has Duty To Disclose
This page consolidates and annotates all enforceable requirements under MPEP § 2001.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Who Has Duty To Disclose
This section addresses Who Has Duty To Disclose. Primary authority: 37 CFR 1.56(c), 37 CFR 1.555(a), and 37 CFR 1.56. Contains: 1 permission and 6 other statements.
Key Rules
Individuals Under Duty
The duty to disclose applies to matters pending before the USPTO and extends broadly to “[e]ach individual associated with the filing and prosecution of a patent application” and “[e]ach individual associated with the patent owner in a reexamination proceeding.” 37 CFR 1.56(c) and 1.555(a). For patent applications, including reissue applications, these individuals include each inventor named in the application, each attorney or agent who prepares or prosecutes the application, and “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application. For reexamination proceedings, these individuals include “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding.” 37 CFR 1.555(a).
The duty to disclose applies to matters pending before the USPTO and extends broadly to “[e]ach individual associated with the filing and prosecution of a patent application” and “[e]ach individual associated with the patent owner in a reexamination proceeding.” 37 CFR 1.56(c) and 1.555(a). For patent applications, including reissue applications, these individuals include each inventor named in the application, each attorney or agent who prepares or prosecutes the application, and “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application. For reexamination proceedings, these individuals include “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding.” 37 CFR 1.555(a).
The duty of disclosure applies only to individuals, not to organizations. For instance, the duty of disclosure would not apply to a corporation or institution as such. However, it would apply to individuals within the corporation or institution who were substantively involved in the preparation or prosecution of the application, and actions by such individuals may affect the rights of the corporation or institution.
Duty of Disclosure Fundamentals
The duty to disclose applies to matters pending before the USPTO and extends broadly to “[e]ach individual associated with the filing and prosecution of a patent application” and “[e]ach individual associated with the patent owner in a reexamination proceeding.” 37 CFR 1.56(c) and 1.555(a). For patent applications, including reissue applications, these individuals include each inventor named in the application, each attorney or agent who prepares or prosecutes the application, and “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application. For reexamination proceedings, these individuals include “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding.” 37 CFR 1.555(a).
The duty of disclosure applies only to individuals, not to organizations. For instance, the duty of disclosure would not apply to a corporation or institution as such. However, it would apply to individuals within the corporation or institution who were substantively involved in the preparation or prosecution of the application, and actions by such individuals may affect the rights of the corporation or institution.
Timing of Duty
The duty to disclose applies to matters pending before the USPTO and extends broadly to “[e]ach individual associated with the filing and prosecution of a patent application” and “[e]ach individual associated with the patent owner in a reexamination proceeding.” 37 CFR 1.56(c) and 1.555(a). For patent applications, including reissue applications, these individuals include each inventor named in the application, each attorney or agent who prepares or prosecutes the application, and “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application. For reexamination proceedings, these individuals include “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding.” 37 CFR 1.555(a).
Material Information Definition
The duty to disclose applies to matters pending before the USPTO and extends broadly to “[e]ach individual associated with the filing and prosecution of a patent application” and “[e]ach individual associated with the patent owner in a reexamination proceeding.” 37 CFR 1.56(c) and 1.555(a). For patent applications, including reissue applications, these individuals include each inventor named in the application, each attorney or agent who prepares or prosecutes the application, and “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application. For reexamination proceedings, these individuals include “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding.” 37 CFR 1.555(a).
Citations
| Primary topic | Citation |
|---|---|
| Duty of Disclosure Fundamentals Individuals Under Duty Material Information Definition Timing of Duty | 37 CFR § 1.555(a) |
| Duty of Disclosure Fundamentals Individuals Under Duty Material Information Definition Timing of Duty | 37 CFR § 1.56(c) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2001.01 — Who Has Duty To Disclose
Source: USPTO2001.01 Who Has Duty To Disclose [R-07.2022]
37 CFR 1.56 Duty to disclose information material to patentability.
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- (c) Individuals associated with the filing or prosecution of a
patent application within the meaning of this section are:
- (1) Each inventor named in the application;
- (2) Each attorney or agent who prepares or prosecutes the application; and
- (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
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37 CFR 1.56 (pre-AIA) Duty to disclose information material to patentability.
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- (c) Individuals associated with the filing or prosecution of a
patent application within the meaning of this section are:
- (1) Each inventor named in the application;
- (2) Each attorney or agent who prepares or prosecutes the application; and
- (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.
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The duty to disclose applies to matters pending before the USPTO and extends broadly to “[e]ach individual associated with the filing and prosecution of a patent application” and “[e]ach individual associated with the patent owner in a reexamination proceeding.” 37 CFR 1.56(c) and 1.555(a). For patent applications, including reissue applications, these individuals include each inventor named in the application, each attorney or agent who prepares or prosecutes the application, and “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application. For reexamination proceedings, these individuals include “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding.” 37 CFR 1.555(a).
The duty of disclosure applies only to individuals, not to organizations. For instance, the duty of disclosure would not apply to a corporation or institution as such. However, it would apply to individuals within the corporation or institution who were substantively involved in the preparation or prosecution of the application, and actions by such individuals may affect the rights of the corporation or institution.