Advising Clients About The Duty Of Candor – Part I

June 29, 2007

in Client Communications,Examples of Responses

This post is a slight departure from previous posts on this blog in that it focuses on communications between prosecutors and clients rather than communications between prosecutors and the U.S. Patent and Trademark Office.

The duty of candor that every applicant and patent practitioner owes to the U.S. Patent and Trademark Office (USPTO) has been of increased attention since the Federal Circuit issued its opinion in McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 06-1517 (2007). For now, I will leave the debate about the practical effects of that decision to others. Instead, this post focuses on ways a practitioner can advise and remind a client of this important duty.

A Review of the Duty of Candor (Rule 56)

The filing of a patent application in the USPTO imposes an obligation on all persons involved with the prosecution of that application to satisfy a duty of candor. This duty of candor is articulated by Section 1.56 of Title 37 of the Code of Federal Regulations (commonly referred to as Rule 56) and requires that all information “material to patentability”  must be cited to the USPTO. Information is “material to patentability” when (1) it is not cumulative to information already of record in the application, and (2) either: establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or refutes, or is inconsistent with, a position the applicant has taken in (i) opposing an argument of unpatentability relied on by the Office, or (ii) asserting an argument of patentability.

A failure to satisfy this duty can have severe consequences, including the unenforceability of any patent that issues from the application. I submit, therefore, that it is only prudent to expressly advise clients of this continuing duty, and to do so at multiple stages of prosecution. The following are examples of the different form paragraphs I find useful.

1. Upon Filing Of An Application

Please be advised that every applicant for a U.S. patent has a duty of candor and good faith in dealing with the United States Patent and Trademark Office. This duty extends to all persons involved with the filing and prosecution of an application and requires, during the pendency of the application, the submission of all known information that is material to the patentability of any claim. Accordingly, if you are presently aware of any information that may be material, please let us know so that we may submit that information in an Information Disclosure Statement (IDS). Also, if you become aware of any information that may be material, please let us know as soon as practicable after it is discovered so that we may submit that information in an IDS. A copy of the rule setting forth this duty, along with a memorandum about the duty of disclosure, are enclosed for your convenience and future reference. If you have any questions about this duty, please let us know so that we may answer them for you.

2. After A First Or Non-Final Office Action Has Issued

We remind you that information material to patentability must be cited to the U.S. Patent and Trademark Office. Since an Office Action has been issued in this application, any information cited at this time will be considered as a matter of right only if accompanied by either (i) a government fee or (ii) a statement that the information was first cited in any foreign counterpart, or first discovered, within the last three months. Accordingly, if you are or become aware of any information material to patentability that has not yet been cited, please inform us as soon as possible.

3. After A Final Office Action Has Issued

We remind you that information material to patentability must be cited to the U.S. Patent and Trademark Office. Since a final Office Action has been issued in this application, any information cited at this time will be considered as a matter of right only if accompanied by both (i) a government fee and (ii) a statement that the information was first cited in any foreign counterpart, or first discovered, within the last three months. Accordingly, if you are or become aware of any information material to patentability that has not yet been cited, please inform us as soon as possible.

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© 2007, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 2 comments… read them below or add one }

Len July 5, 2007 at 2:26 pm

I agree it is important to communicate to clients their responsibility during pendency of patent applications. One good idea is to continue this communication at each stage of prosecution, rather than simply at the time of filing. However, I believe your paragraphs are too technical for most clients, and they include far more information than necessary. It is enough for clients to know that they must submit the information, not what we, as attorneys must supply with the information, e.g., fee or statements, etc. The final paragraph is not even 100% accurate since in many cases, the information submitted after a final rejection will be submitted with an RCE, obviating any fee or statement requirement.

mike July 9, 2007 at 11:55 am

Len – Thank you for your interest in this blog and for taking the time to leave a comment.

I think that you raise a great point. Determinations of how much information to provide to a client and/or the best way to express that information are important. These determinations, however, turn on many considerations such as the technical/legal savvy of a client, a client’s instructions/requests/preferences, prior dealings with a client, and one’s professional judgment. Consequently, the answers are going to be different for every client and whether a particular explanation of the duty of candor is “too technical” or provides “far too much” information may be difficult to ascertain without considering the circumstances of a specific representation. The same reasoning applies to whether one wishes to advise a client of potential fees before incurring them or of information that may be necessary to avoid having to file an RCE. After all, attorneys do not pay the government fees (we “advance them” as a courtesy to our clients) and do not provide statements (clients affirm whether such statements can properly be made after careful investigation). And, as for the accuracy of the paragraph, it is accurate for a very specific stage of prosecution and intentionally explains the prerequisites necessary for consideration of an IDS as a matter of right at this specific stage of prosecution. Of course, if an attorney believes that a client would benefit from an expanded explanation, that attorney should provide that explanation.

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