Who has the duty to disclose information material to patentability?
According to 37 CFR 1.56(c), the duty to disclose information material to patentability applies to: Each inventor named in the application Each attorney or agent who prepares or prosecutes the application Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant,…
Read MoreWhat is considered ‘substantive involvement’ in a patent application?
The MPEP doesn’t provide a precise definition of ‘substantive involvement’, but it does offer guidance on who is considered substantively involved in the preparation or prosecution of a patent application. According to 37 CFR 1.56(c), this includes: “Every other person who is substantively involved in the preparation or prosecution of the application and who is…
Read MoreAre inventors always subject to the duty to disclose?
Yes, inventors are always subject to the duty to disclose information material to patentability. The MPEP, citing 37 CFR 1.56(c), explicitly states that individuals associated with the filing or prosecution of a patent application include: “(1) Each inventor named in the application” This means that every inventor listed on a patent application has a duty…
Read MoreCan the actions of individuals affect the rights of their employer in patent matters?
Yes, the actions of individuals can affect the rights of their employer in patent matters. The MPEP explicitly states: “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…
Read MoreHow does the duty to disclose apply in reexamination proceedings?
The duty to disclose in reexamination proceedings is similar to that in patent applications, but applies to a slightly different group of individuals. According to the MPEP, for reexamination proceedings, the duty applies to: “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on…
Read MoreDoes the duty to disclose apply to organizations?
No, the duty to disclose does not apply to organizations as entities. The MPEP explicitly states: “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’s important to note that while organizations themselves don’t have a…
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