This chapter deals with the duties of disclosure. Each inventor and every other individual who is substantially involved in the preparation or prosecution of the application has a duty of disclosure. These duties consist of candor, good faith and the duty to disclose all relevant materials to the PTO.

The test may have a question or two related to the duty of disclosure. Know that once an applicant states that a reference is prior art, it can never be taken back. Another point to remember is that the applicant, registered practitioner and assignees will have a duty to disclose materials relevant to the invented subject matter even after the patent has been allowed and issued.

2001 Duty of disclosure, candor and good faith

§ 1.56 Duty to disclose information material to patentability.
(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is canceled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is canceled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:
(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability. A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burdenofproof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
(e) In any continuationinpart application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuationinpart application.

What is the duty to disclose?
any information material to the patentability of the invention must be disclosed to the Office with candor and good faith
materiality refers to all references or other information pertaining to the patentability of the subject matter in an application

the duty does not depend on the likelihood that an examiner would find the art independently
information is material to patentability when:
it establishes a prima facie case of unpatentability to a claim
it refutes or is inconsistent with a position the applicant takes

the incentive to submit information is that it will result in a strengthened patent and will avoid later questions of materiality and the intent to deceive
in addition, even an issued patent may be withdrawn from issue because one or more claims are unpatentable

no patent will be granted on an application in which fraud on the Office occurred or the duty of disclosure was violated through bad faith or intentional misconduct

Information included under the duty to disclose:
information material to an invention (duty to disclose) includes more than just patents and printed publications

the duty applies to all presently known information, such as:
information on possible prior public uses, sales, offers to sell, derived knowledge, a prior invention by another, inventorship conflicts, etc...
information known in the past may not fit under the duty to disclose because it may not be realized that the information is relevant to the present application
the rules are not intended to require information favorable to patentability such as evidence of commercial success of the invention

if a particular inventor has different applications pending in which similar subject matter, but patentably indistinct claims are present, each of the involved applications must be disclosed to the examiner

information from a related litigation must be brought to the attention of the examiner

sources of information may include:
coworkers
trade shows
communications from or with competitors
potential infringers
third parties
related foreign applications
related litigations
preliminary examination searches

When does the duty to disclose exist?
the duty to disclose exists until the application becomes abandoned
the duty does not end when an application becomes allowed, but extends until a patent is granted on that application
the rules provide for information to be considered even after a Notice of allowance is mailed

if information is sent in before the issue fee is paid, the application may be withdrawn from issue and abandoned so that the relevant information may be considered in a continuing application

2002 Disclosure by whom and how made
Who has a duty to disclose?
each inventor
each registered practitioner
each assignee
every other person who is substantially involved in the preparation or prosecution
of the application
the duty does not extend to typists, clerks, and similar personnel
the duty does not extend to corporations

How to disclose the information:
individuals with information may disclose the information to such an attorney, agent or inventor who must then disclose the material (if it is relevant) to the Office

the disclosures must be in writing

2003 Disclosure when made
applicants involved in reissue applications are encouraged to file information disclosure statements at the time of filing or within 2 months of the filing

2004 Aids to compliance with duty of disclosure
aids to proper disclosure that a practitioner may consider giving to his or her client (the inventor) include:
a questionnaire for the applicant involving the disclosure
asking questions about inventorship
asking questions about the disclosure of the best mode
making sure the inventor knows the responsibilities involved with signing the oath
explaining the scope of the claims
evaluating the materiality of the prior art
that the prior art is properly described
an accurate specification
checking on other applications by the same inventor
submitting whatever may be relevant
submitting information promptly
highlighting the most relevant information
checking on continuation-in-part applications
any outside information, such as the information presented at conventions or trade shows
checking that all individuals are informed of their duty of disclosure
recording and keeping discarded information that was not considered relevant

2010 Office handling of duty of disclosure/inequitable conduct issues
a determination of inequitable conduct or a deceptive intention by the applicant requires a high level of proof

the Office does not investigate and reject original or reissue applications under 37 C.F.R. 1.56 (the duty to disclose)

a court is presently the best forum to consider duty of disclosure issues for finding an "intent to mislead"

collateral estoppel:
once a patent is declared invalid, a collateral estoppel barrier is created against any further litigation and the PTO will not want to review any other matters concerning it

2016 Fraud, inequitable conduct, or violation of duty of disclosure affects all claims
a finding of "fraud", "inequitable conduct" or a violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid