What information must be disclosed in reexamination proceedings?
In reexamination proceedings, individuals associated with the patent owner must disclose all information known to be material to patentability. According to MPEP 2014: “The duty to disclose the information exists with respect to each claim pending in the reexamination proceeding until the claim is cancelled. Information material to the patentability of a cancelled claim need…
Read MoreWhat information is considered material to patentability?
Information material to patentability is broadly defined in 37 CFR 1.56. It includes: Prior art such as patents and publications Information on enablement Possible prior public uses, sales, or offers to sell Derived knowledge Prior invention by another Inventorship conflicts Litigation statements As stated in the MPEP, “Materiality is not limited to prior art but…
Read MoreWhat information must be disclosed under the Duty of Disclosure?
Under the Duty of Disclosure, applicants and their representatives must disclose all known material information to the USPTO. According to MPEP 2001, material information is defined as: “Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by…
Read MoreHow long does the Duty of Disclosure last?
The Duty of Disclosure is an ongoing obligation that extends throughout the entire patent application process and beyond. According to MPEP 2001, the duty continues until the patent is granted or the application is abandoned. Specifically, the MPEP states: “The duty to disclose all information known to be material to patentability is deemed to be…
Read MoreHow should information from related foreign patent applications be handled?
Information from related foreign patent applications, particularly prior art cited or used in rejecting claims, must be brought to the attention of the U.S. Patent and Trademark Office. The MPEP states: “Applicants and other individuals, as set forth in 37 CFR 1.56, have a duty to bring to the attention of the Office any material…
Read MoreAre there any exceptions to the duty of disclosure to the USPTO?
While the duty of disclosure to the United States Patent and Trademark Office (USPTO) is a crucial aspect of the patent application process, there are some limitations to what needs to be disclosed. The MPEP 2002.01 provides an important clarification: “Information that is not material need not be passed along to the Office.” This statement…
Read MoreWhat is the Duty of Disclosure in patent law?
The Duty of Disclosure is a fundamental obligation in patent law that requires patent applicants and their representatives to disclose all known material information to the United States Patent and Trademark Office (USPTO) during the patent application process. This duty is outlined in MPEP 2000. The purpose of this duty is to ensure that the…
Read MoreWhat is the duty of disclosure in patent applications?
The duty of disclosure is a fundamental obligation in patent law, as outlined in 37 CFR 1.56. It requires that: “Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all…
Read MoreWhat is the duty of disclosure regarding prior art cited in related foreign applications?
Applicants and other individuals involved in patent prosecution have a duty to bring to the attention of the USPTO any material prior art or other information cited or brought to their attention in any related foreign application. This duty is outlined in MPEP 2001.06(a) and 37 CFR 1.56. The MPEP states: “The inference that such…
Read MoreWhat is the duty of disclosure in patent term extension proceedings?
The duty of disclosure in patent term extension proceedings refers to the obligation of candor and good faith towards the USPTO, the Secretary of Health and Human Services, and the Secretary of Agriculture. This duty applies to the patent owner, their agent, attorneys, and anyone substantially involved in the patent term extension process. According to…
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