When is there no duty to disclose information to the USPTO?
According to the MPEP Section 2001.05, there is generally no duty to disclose information to the United States Patent and Trademark Office (USPTO) when: The information is clearly cumulative to information already of record or being made of record in the application, or The information is clearly not material. The MPEP states: “Generally, when information…
Read MoreWhat types of information are considered material in reexamination proceedings?
What types of information are considered material in reexamination proceedings? In reexamination proceedings, certain types of information are considered material to patentability. According to MPEP 2280, material information includes: Prior art patents or printed publications that are material to patentability under 37 CFR 1.56(b) Information on enablement, written description, and utility that is material to…
Read MoreHow is information material to patentability defined in ex parte reexamination under 35 U.S.C. 257?
In ex parte reexamination proceedings resulting from supplemental examination under 35 U.S.C. 257, the definition of information material to patentability is specific. According to MPEP 2823: “information material to patentability will be defined by 37 CFR 1.56(b) for an ex parte reexamination proceeding resulting from a supplemental examination proceeding“ This means that the standard definition…
Read MoreWhat is considered ‘material information’ in patent term extension proceedings?
‘Material information’ in patent term extension proceedings is any information that could significantly impact the determination of entitlement to the extension sought. The MPEP 2762 defines it as follows: “Information is ‘material’ when there is a substantial likelihood that the Office or the Secretary would consider it important in determinations to be made in the…
Read MoreWhat types of information from litigation are considered material to patent examination?
According to MPEP 2001.06(c), several types of information from litigation are considered material to patent examination: Evidence of possible prior public use or sales Questions of inventorship Prior art references Allegations of fraud, inequitable conduct, or violation of duty of disclosure Assertions made during litigation that contradict statements made to the examiner Defenses raised against…
Read MoreWhat is considered ‘material information’ in the context of the duty of disclosure?
‘Material information’ in the context of the duty of disclosure refers to any information that is relevant to the patentability of an invention. This includes prior art, public disclosures, or any other information that could affect the decision of a patent examiner or the Patent Trial and Appeal Board (PTAB). While MPEP 2001.03 does not…
Read MoreHow does market testing and commercialization information relate to patent disclosures?
Market testing, marketing, and commercialization activities can produce information material to patentability that should be disclosed to the USPTO. The MPEP 2015 states: “Activities or documents associated with market testing, marketing, or commercialization by the patent applicant can also be material to patentability, and therefore, when material, should be disclosed to the USPTO.” This requirement…
Read MoreWhat information from related litigation or trial proceedings must be disclosed to the USPTO?
According to MPEP 2001.06(c), any material information arising from litigation or trial proceedings related to the subject matter for which a patent is being sought must be disclosed to the USPTO. This includes: Evidence of possible prior public use or sales Questions of inventorship Prior art Allegations of fraud, inequitable conduct, or violation of duty…
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 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…
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