Client Practice Pointer: The Duty of Candor

This short section of the website doesn’t relate to a service provided by the firm, but it’s so important to the services obtained by the client that it’s appropriate to mention it here as a “client practice pointer.”

Once a patent application is filed, does the inventor have a duty to inform the Examiner at the U.S. Patent and Trademark Office about information that is material to whether the Examiner should grant a patent?  The answer is clear: yes.  Rule 56 of the PTO Rules of Practice states it fairly succinctly:

“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…” Title 37, CODE OF FEDERAL REGULATIONS, § 1.56(a) (emphasis added).

Thus, if you the inventor are aware of items that may constitute “prior art” (e.g., prior journal articles, prior marketplace products, previously issued patents) that may be material to patentability, do yourself a favor and discuss this with your patent attorney.  If the information appears to be material to patentability, he’ll forcefully recommend disclosure of the information to the U.S. Patent and Trademark Office, because, to fail to disclose the information would be to create a ground for later invalidating the patent entirely (rendering all of the inventor’s and patent attorney’s efforts prosecuting the application at the U.S. Patent and Trademark Office a waste).