How does MPEP 704.10 relate to the duty of disclosure?

How does MPEP 704.10 relate to the duty of disclosure?

MPEP 704.10 and the duty of disclosure are closely related but distinct concepts in patent law. While the duty of disclosure, as outlined in MPEP 2001, requires applicants to disclose known material information, MPEP 704.10 gives examiners the authority to request specific information.

The MPEP states: “The examiner’s authority to require information under 37 CFR 1.105 is separate from the duty of disclosure under 37 CFR 1.56.” This means that even if an applicant has fulfilled their duty of disclosure, an examiner can still require additional information under MPEP 704.10.

Key differences include:

• The duty of disclosure is ongoing and proactive, while MPEP 704.10 requirements are specific and reactive to examiner requests.
• MPEP 704.10 can cover a broader range of information, not limited to material prior art.
• Failure to comply with an MPEP 704.10 requirement can result in abandonment of the application, while breach of the duty of disclosure can lead to inequitable conduct findings.

To learn more:

• MPEP 704.10
• duty of disclosure
• patent examination
• information requirements
• 37 CFR 1.105
• 37 CFR 1.56

To learn more:

• examiner requests