37 CFR § 1.765 — Duty of disclosure in patent term extension (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.765 Duty of disclosure in patent term extension
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.765, including 25 rules 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.
Summary
This section details the duty of candor and good faith towards the USPTO, HHS Secretary, and USDA Secretary in patent term extension proceedings. It outlines the obligations of patent owners, attorneys, and agents to disclose material information accurately and timely.
What this section covers
- Defines the duty of candor and good faith towards the USPTO, HHS Secretary, and USDA Secretary.
- Provides guidance on the obligations of patent owners, attorneys, and agents in patent term extension proceedings.
Key obligations
- Requires timely and accurate disclosure of material information.
- Ensures attorneys and agents comply with this duty on behalf of their clients.
- Sanctions for failure to comply include denial of patent term extension.
Practice notes
- Maintain detailed records of communications and disclosures related to patent term extension.
- Avoid making false or misleading statements in patent term extension proceedings to prevent potential sanctions.
Official MPEP § 1.765 — Duty of disclosure in patent term extension
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.765 Duty of disclosure in patent term extension proceedings.
- (a) A duty of candor and good faith toward the Patent and Trademark Office and the Secretary of Health and Human Services or the Secretary of Agriculture rests on the patent owner or its agent, on each attorney or agent who represents the patent owner and on every other individual who is substantively involved on behalf of the patent owner in a patent term extension proceeding. All such individuals who are aware, or become aware, of material information adverse to a determination of entitlement to the extension sought, which has not been previously made of record in the patent term extension proceeding must bring such information to the attention of the Office or the Secretary, as appropriate, in accordance with paragraph (b) of this section, as soon as it is practical to do so after the individual becomes aware of the information. Information is material where there is a substantial likelihood that the Office or the Secretary would consider it important in determinations to be made in the patent term extension proceeding.
- (b) Disclosures pursuant to this section must be accompanied by a copy of each written document which is being disclosed. The disclosure must be made to the Office or the Secretary, as appropriate, unless the disclosure is material to determinations to be made by both the Office and the Secretary, in which case duplicate copies, certified as such, must be filed in the Office and with the Secretary. Disclosures pursuant to this section may be made to the Office or the Secretary, as appropriate, through an attorney or agent having responsibility on behalf of the patent owner or its agent for the patent term extension proceeding or through a patent owner acting on his or her own behalf. Disclosure to such an attorney, agent or patent owner shall satisfy the duty of any other individual. Such an attorney, agent or patent owner has no duty to transmit information which is not material to the determination of entitlement to the extension sought.
- (c) No patent will be determined eligible for extension and no extension will be issued if it is determined that fraud on the Office or the Secretary was practiced or attempted or the duty of disclosure was violated through bad faith or gross negligence in connection with the patent term extension proceeding. If it is established by clear and convincing evidence that any fraud was practiced or attempted on the Office or the Secretary in connection with the patent term extension proceeding or that there was any violation of the duty of disclosure through bad faith or gross negligence in connection with the patent term extension proceeding, a final determination will be made pursuant to § 1.750 that the patent is not eligible for extension.
- (d) The duty of disclosure pursuant to this section rests on the individuals identified in paragraph (a) of this section and no submission on behalf of third parties, in the form of protests or otherwise, will be considered by the Office. Any such submissions by third parties to the Office will be returned to the party making the submission, or otherwise disposed of, without consideration by the Office.
[Added, 52 FR 9396, Mar. 24 1987, effective May 26, 1987, para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]
- Duty Of Disclosure
- Disclosure Basics
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- Disclosure Materiality
- Patent Term
- Patent Term Extension
- Term Expiration
| MPEP Section | Rules |
|---|---|
| MPEP § 2762 | |
| MPEP § 2762.01 | |
| MPEP § 2763 |