What is the significance of the phrase “material to patentability” in relation to copending applications?
What is the significance of the phrase “material to patentability” in relation to copending applications?
The phrase “material to patentability” is crucial when considering information from copending applications. According to MPEP 2001.06(b):
“The information from the copending application may be material to patentability of the application in question.”
This means that any information from a copending application that could affect the patentability of the current application must be disclosed. Information is considered material if:
- It creates a prima facie case of unpatentability
- It refutes or is inconsistent with a position the applicant takes in arguing for patentability
- It could reasonably be expected to be important to a reasonable examiner in deciding patentability
Applicants and practitioners must carefully evaluate information from copending applications through this lens of materiality. When in doubt, it’s safer to disclose the information to ensure compliance with the duty of disclosure under 37 CFR 1.56.
To learn more:
Topics:
MPEP 2000 - Duty Of Disclosure,
MPEP 2001.06(B) - Information Relating To Or From Copending United States Patent Applications,
Patent Law,
Patent Procedure