What are the duties of disclosure and reasonable inquiry in dealings with other government agencies?
Individuals with a duty to disclose or parties with a duty of reasonable inquiry must ensure consistency in statements made to the USPTO and other government agencies regarding claimed subject matter. The MPEP 2015 states: “Each individual with a duty to disclose, or party with a duty of reasonable inquiry, should ensure that the statements…
Read MoreWhat should inventors do if they have different pending applications with similar subject matter?
If an inventor has different applications pending which disclose similar subject matter but claim patentably indistinct inventions, they must disclose the existence of these other applications to the examiner of each involved application. MPEP 2001.06(b) states: “For example, if a particular inventor has different applications pending which disclose similar subject matter but claim patentably indistinct…
Read MoreWhat are the disclosure requirements for information related to regulatory review, such as FDA submissions?
Information submitted to regulatory review bodies, such as the U.S. Food & Drug Administration (FDA), may be material to pending patent applications or reexamination proceedings and should be disclosed to the USPTO. The MPEP states: “Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and…
Read MoreHow should ongoing litigation be disclosed during the patent examination process?
For ongoing litigation related to a pending patent application, the MPEP 2001.06(c) provides guidance on how to disclose this information: Promptly bring the litigation to the attention of the USPTO. Provide enough information to clearly inform the Office of the nature of the issues in the litigation. Submit relevant litigation materials that are “material to…
Read MoreHow should information from related litigation and trial proceedings be handled?
Information from related litigation and trial proceedings, including those conducted by the Patent Trial and Appeal Board (PTAB), must be disclosed if it is material to pending related patent applications. The MPEP states: “Where the subject matter for which a patent is being sought is or has been involved in litigation and/or a trial proceeding,…
Read MoreWhat information from copending U.S. patent applications needs to be disclosed?
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes: Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee Applications that disclose similar subject matter Prior art references…
Read MoreHow 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…
Read MoreWhat is the role of courts in handling duty of disclosure and inequitable conduct issues?
Courts play a primary role in handling duty of disclosure and inequitable conduct issues in the patent system. According to MPEP 2010: “It is the courts and not the Office that are in the best position to fashion an equitable remedy to fit the precise facts in those cases where inequitable conduct is established.” The…
Read MoreHow can inventorship errors be corrected in patent applications?
For applications filed on or after September 16, 2012, inventorship errors can be corrected without disclosing the circumstances of the error. This is based on 35 U.S.C. 116(c), which states: “Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in…
Read MoreIs information about copied claims considered material under the duty of disclosure?
Yes, information about claims copied from a patent is considered material under the duty of disclosure. The MPEP 2001.06(d) clearly states: “Clearly, the information required by 37 CFR 41.202(a) as to the source of copied claims is material information under 37 CFR 1.56 and failure to inform the USPTO of such information may violate the…
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