Duty to Disclose

Duty to disclose known information, no duty to search

Upon filing a patent application, the inventors and everyone associated with the preparation, filing and prosecution of the application before the Patent Office has a duty to disclose all material information known to that individual related to patentability of the claims of the patent application. Although there is no duty to actively search for material information, the duty to disclose known material information exists throughout pendency of the patent application.

Who is under the duty to disclose

The period of pendency of a patent application begins upon filing an application for patent and ends upon issuance of a patent. As mentioned earlier,the duty to disclose also extends to other individuals (e.g., patent attorney, in-house counsel, in-house patent coordinator, etc.) associated with the filing or prosecution of a patent application. 37 CFR § 1.56.

Cumulative or redundant information

Material information that is cumulative need not be submitted to the Patent Office. For example, redundant information already before the Patent Office need not be submitted. However, to be safe it is preferable to disclose all information unless it is an exact copy of information already disclosed. The reason is that the failure to submit material information known to an individual with the duty to disclose it may cause any patent issuing from the application to be unenforceable.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Irvine Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

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