Comments on: Advising Clients About The Duty Of Candor – Part II http://patentablydefined.com/2007/07/23/advising-clients-about-the-duty-of-candor-part-ii/ A practical patent prosecution blog published by Michael Kondoudis Wed, 25 Jan 2012 17:32:27 +0000 hourly 1 http://wordpress.org/?v=3.3.1 By: David Boundy http://patentablydefined.com/2007/07/23/advising-clients-about-the-duty-of-candor-part-ii/comment-page-1/#comment-68 David Boundy Mon, 23 Jul 2007 15:54:41 +0000 http://patentablydefined.com/?p=24#comment-68 It's important to note that the PTO's Rule 56 and courts' doctrine of inequitable conduct are analytically distinct and must be kept separate. Courts' definition of "materiality" is broader, PTO's Rule 56 has no "intent" element, and the procedures for cure are quite different. You're accountable for meeting the stricter standard, whichever applies on a case-by-case basis (which is almost always the court's broader definition). Thus, I have used a similar letter, but it does not quote Rule 56 directly. It’s important to note that the PTO’s Rule 56 and courts’ doctrine of inequitable conduct are analytically distinct and must be kept separate. Courts’ definition of “materiality” is broader, PTO’s Rule 56 has no “intent” element, and the procedures for cure are quite different. You’re accountable for meeting the stricter standard, whichever applies on a case-by-case basis (which is almost always the court’s broader definition).

Thus, I have used a similar letter, but it does not quote Rule 56 directly.

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