©  2007, Michael E. Kondoudis

I have received several inquiries for the memorandum referenced in the first form paragraph of my earlier post on this subject. The following is the basic text I start with when drafting the memorandum for a new client.

2006 Memorandum Re: The Duty of Disclosure and Materiality

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 (USPTO). This duty generally requires, during the pendency of an application, that certain individuals disclose to the USPTO all known information that is “material to patentability.” A failure to satisfy this duty of candor can have severe consequences, including the unenforceability of any patent that issues from the application. Therefore, it is important to be aware of who must comply with this duty of candor and what makes information “material.”

Section 1.56 of Title 37 of the Code of Federal Regulations (known as “Rule 56″) provides, among other things, that any individual who is associated with the filing or prosecution of a patent application must comply with this duty. In essence, this means that everyone involved in the procurement of a patent has a duty to disclose information material to the patentability of a claimed invention. This means that Rule 56 applies to, but is not limited to, named inventors, their attorney(s) or agent(s) involved in the preparation or prosecution of the application, any assignee(s), and anyone else who is substantively involved in the preparation of the application and who is associated with the inventor or any assignee. It is importation to appreciate that the application of Rule 56 is limited only those individuals who are involved in the patenting process. A copy of Rule 56 is attached for your review and future reference.

There is no “bright line test” for determining what information is “material.” Most courts, however, follow a relatively expansive test in which information is deemed material if it is arguably relevant to the issue of patentability of any claim. Rule 56 defines information as “material” when:

(1) it is not cumulative to information already of record in the application; and

(2) either (i) establishes a prima facie case of unpatentability of any claim, by itself or in combination with other information, or (ii) refutes, or is inconsistent with, a position that the applicant has taken relating to the patentability of any claim.

Information is generally considered cumulative when it is merely repetitive or is less relevant than information already of record in the application. A prima facie case of unpatentability exists when the information compels a conclusion that a claim is unpatentable based on a preponderance of evidence, when each term in the claim is given its broadest reasonable construction consistent with the specification, and before any patentablity argument.

Non-limiting examples of potentially material information include U.S. or foreign patents or published patent applications, communications from foreign patent offices in related applications, scientific and other journal articles, brochures, and web sites.

As a “rule of thumb,” we generally recommend erring on the side of caution and disclosing to the USPTO any information that may arguably be relevant to the issue of patentability, so long as it is not overly cumulative.

The Law Office of Michael E. Kondoudis, PC
Patent Attorney Washington
www.mekiplaw.com

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©  2007, Michael E. Kondoudis

The U.S. Patent Office publishes many of its examination guidelines and Examiner training materials on its official website. In my opinion, one of the more useful of these Examiner training materials is an examination guide for rejections under 35 U.S.C. §112 which can be found here. The stated purpose of this training document is to teach new Examiners the principles involved in making rejections under 35 U.S.C. §112. In teaching these principles, this training document articulates specific examination approaches that Examiners are supposed to employ to ensure compliance with 35 U.S.C. §112. For example, on the subject of enablement, this document articulates an “essential test,” “pertinent considerations,” and the burden of proof, as well as providing examples of enablement and identifying applicable sections of the Manual of Patent Examining Procedure.

As a summary of the law regarding 35 U.S.C. §112 from a patent prosecution perspective, this Examiner training document can be particularly useful when responding to §112 rejections since it articulates the actual standards and considerations that an Examiner should be applying during the examination of an application.

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

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