Duty of Disclosure (MPEP 2000)

by patentbar on November 28, 2007 · 1 comment

in MPEP 2000

Who has the duty to disclose: each inventor; attorney; other people “substantially involved.”  (Members of the public are limited to prior art submissions to protest a pending application.)

What: All information “material to patentability” must be disclosed.  Excludes favorable material.  Includes material information at time application is filed or become aware of during prosecution.

How: Disclosure must be in writing; if reissue app, disclosure should be filed with it or within 2 months of the filing thereof.

Burden of proof: Preponderance of evidence; when information points to the unpatentability, the claim is prima facie unpatentable.  Examiners may not investigate deceptive intent.  All claims become invalid or unpatentable where fraud or inequitable conduct is found regarding to any claim.

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1 patentbarNo Gravatar November 29, 2007 at 2:15 am

This chapter is not tested too intensively. You should know who has a duty to disclose:

2001.01 Who Has Duty To Disclose – Individuals having a duty of disclosure are limited to those who are “substantively involved in the preparation or prosecution of the application.”

This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application.

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