MPEP § 2001.05 — Materiality Under 37 CFR 1.56(b) (Annotated Rules)
§2001.05 Materiality Under 37 CFR 1.56(b)
This page consolidates and annotates all enforceable requirements under MPEP § 2001.05, 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.
Materiality Under 37 CFR 1.56(b)
This section addresses Materiality Under 37 CFR 1.56(b). Primary authority: 37 CFR 1.56, 37 CFR 1.56(b)(1), and 37 CFR 1.56(b). Contains: 1 prohibition, 1 guidance statement, 1 permission, and 5 other statements.
Key Rules
Material Information Definition
Under the rule, information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). Generally, when information is clearly cumulative or not material, there is no duty to disclose the information to the Office. “[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It 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.” 37 CFR 1.56(b). In close cases where the materiality or consistency of the information is in question, the applicant should consider submitting this information to the USPTO. The Office believes that most applicants will wish to submit the information even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality. The USPTO holds those individuals subject to this duty to the highest standards.
Under the rule, information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). Generally, when information is clearly cumulative or not material, there is no duty to disclose the information to the Office. “[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It 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.” 37 CFR 1.56(b). In close cases where the materiality or consistency of the information is in question, the applicant should consider submitting this information to the USPTO. The Office believes that most applicants will wish to submit the information even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality. The USPTO holds those individuals subject to this duty to the highest standards.
Under the rule, information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). Generally, when information is clearly cumulative or not material, there is no duty to disclose the information to the Office. “[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It 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.” 37 CFR 1.56(b). In close cases where the materiality or consistency of the information is in question, the applicant should consider submitting this information to the USPTO. The Office believes that most applicants will wish to submit the information even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality. The USPTO holds those individuals subject to this duty to the highest standards.
Under the rule, information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). Generally, when information is clearly cumulative or not material, there is no duty to disclose the information to the Office. “[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It 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.” 37 CFR 1.56(b). In close cases where the materiality or consistency of the information is in question, the applicant should consider submitting this information to the USPTO. The Office believes that most applicants will wish to submit the information even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality. The USPTO holds those individuals subject to this duty to the highest standards.
Materiality Standard
Under the rule, information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). Generally, when information is clearly cumulative or not material, there is no duty to disclose the information to the Office. “[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It 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.” 37 CFR 1.56(b). In close cases where the materiality or consistency of the information is in question, the applicant should consider submitting this information to the USPTO. The Office believes that most applicants will wish to submit the information even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality. The USPTO holds those individuals subject to this duty to the highest standards.
Under the rule, information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). Generally, when information is clearly cumulative or not material, there is no duty to disclose the information to the Office. “[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It 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.” 37 CFR 1.56(b). In close cases where the materiality or consistency of the information is in question, the applicant should consider submitting this information to the USPTO. The Office believes that most applicants will wish to submit the information even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality. The USPTO holds those individuals subject to this duty to the highest standards.
Establishing Prima Facie Case
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
Duty of Disclosure
Under the rule, information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). Generally, when information is clearly cumulative or not material, there is no duty to disclose the information to the Office. “[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It 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.” 37 CFR 1.56(b). In close cases where the materiality or consistency of the information is in question, the applicant should consider submitting this information to the USPTO. The Office believes that most applicants will wish to submit the information even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality. The USPTO holds those individuals subject to this duty to the highest standards.
Citations
| Primary topic | Citation |
|---|---|
| Duty of Disclosure Material Information Definition Materiality Standard | 37 CFR § 1.56(b) |
| Duty of Disclosure Material Information Definition Materiality Standard | 37 CFR § 1.56(b)(1) |
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 § 2001.05 — Materiality Under 37 CFR 1.56(b)
Source: USPTO2001.05 Materiality Under 37 CFR 1.56(b) [R-07.2022]
37 CFR 1.56 Duty to disclose information material to patent ability.
*****
- (b) Under this section, information is material to patentability
when it is not cumulative to information already of record or being made of
record in the application, and
- (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
- (2) It 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.
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
*****
Under the rule, information is not material unless it comes within the definition of 37 CFR 1.56(b)(1) or (2). Generally, when information is clearly cumulative or not material, there is no duty to disclose the information to the Office. “[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It 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.” 37 CFR 1.56(b). In close cases where the materiality or consistency of the information is in question, the applicant should consider submitting this information to the USPTO. The Office believes that most applicants will wish to submit the information even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality. The USPTO holds those individuals subject to this duty to the highest standards.