What are the consequences of failing to disclose material information about copending applications?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Failing to disclose material information about copending applications can have serious consequences. While MPEP 2001.06(b) does not explicitly state the consequences, it’s important to understand the potential outcomes:

• Inequitable conduct: Failure to disclose material information could be considered inequitable conduct, which may render the patent unenforceable.
• Patent invalidation: If the undisclosed information is later discovered, it could lead to the invalidation of the patent.
• Disciplinary action: Attorneys or agents who fail to comply with the duty of disclosure may face disciplinary action from the USPTO’s Office of Enrollment and Discipline.
• Loss of patent rights: In severe cases, the applicant may lose their patent rights entirely.

The MPEP emphasizes the importance of disclosure: “Care should be taken to see that prior art or other information in one application is cited to the examiner in other applications to which it would be material.”

To avoid these consequences, it’s crucial for applicants and their representatives to thoroughly review all copending applications and disclose any material information to the USPTO.