Who has the duty to disclose information to the USPTO?
The duty to disclose information to the United States Patent and Trademark Office (USPTO) applies to various individuals involved in the patent application process. While the specific MPEP section provided doesn’t elaborate on this, it’s generally understood that this duty extends to: Inventors Patent attorneys or agents representing the applicant Anyone substantively involved in the…
Read MoreWhat is the difference between pre-AIA and current 37 CFR 1.56?
The main difference between the pre-AIA (America Invents Act) and current versions of 37 CFR 1.56 lies in the applicability of paragraph (c)(3). The MPEP notes: “[Editor Note: Para. (c)(3) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012.]” This means that for patent…
Read MoreWhat type of information must be disclosed to the USPTO?
The duty of disclosure requires individuals to disclose information that is material to patentability. While the specific MPEP section provided doesn’t elaborate on this, the general understanding based on 37 CFR 1.56 is that material information includes: Prior art references Information about enablement Information related to statutory bars Any information that a reasonable examiner would…
Read MoreWhen did the current version of 37 CFR 1.56 become applicable?
The applicability of the current version of 37 CFR 1.56, particularly paragraph (c)(3), depends on the filing date of the patent application. According to the MPEP: “[Editor Note: Para. (c)(3) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.]” This means that for patent…
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