Duty of Disclosure

Duty of Disclosure — 37 CFR 1.56 / MPEP 2001 Duty applies to: inventor, prosecution counsel, all persons substantially involved in prosecution. Continues throughout prosecution until patent issues. Materiality under 37 CFR 1.56(b): information is material when it is not cumulative AND either (1) establishes prima facie case of unpatentability, OR (2) refutes or is inconsistent with a position applicant takes in opposing a USPTO rejection or asserting patentability.

IDS Timing Rules — 37 CFR 1.97 / MPEP 2012 Window 1 (free): Before first Office Action — no fee, no certification required. Window 2 (fee OR certification): After first OA but before final rejection or NOA — requires fee OR 37 CFR 1.97(e) certification. Window 3 (fee AND certification): After final rejection or NOA — requires BOTH fee AND 37 CFR 1.97(d) certification that no item was known more than 3 months before filing. After issue fee paid: IDS NOT considered at all.

IDS Content — 37 CFR 1.98 / MPEP 2013 List of all patents, publications, and other information. Copy of each foreign patent document and non-English document with translation. No copy required for US patents and US published applications. Concise explanation optional but recommended for NPL.

Inequitable Conduct — MPEP 2016 Therasense standard (Fed. Cir. 2011) for litigation: must show (1) but-for materiality — examiner would not have allowed claims if aware of information, AND (2) specific intent to deceive USPTO. Higher bar than prosecution materiality standard. Cumulative information is not but-for material. Remedy: patent unenforceable.

Duty Does Not Require Searching — MPEP 2001.05 No affirmative duty to conduct prior art search. Duty only applies to information actually known. Cannot deliberately avoid learning of prior art.

Disclosure by Others — MPEP 2002 Other individuals (not attorney/agent/inventor) may satisfy duty by disclosing information to the attorney, agent, or inventor — who then must disclose to USPTO.