[Code of Federal Regulations]

[Title 37, Volume 1]

[Revised as of July 1, 1999]

From the U.S. Government Printing Office via GPO Access

TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS

CHAPTER I--PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents

Subpart B--National Processing Provisions

Sec. 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

[[Page 40]]

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respect to each pending claim until the claim is cancelled or withdrawn

from consideration, or the application becomes abandoned. Information

material to the patentability of a claim that is cancelled or withdrawn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 Secs. 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,

(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, burden-of-proof 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.

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.

[57 FR 2034, Jan. 17, 1992]

37CFR1.97

TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS

CHAPTER I--PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents

Subpart B--National Processing Provisions

Sec. 1.97 Filing of information disclosure statement.

(a) In order for an applicant for a patent or for a reissue of a

patent to have an information disclosure statement in compliance with

Sec. 1.98 considered by the Office during the pendency of the

application, it must satisfy paragraph (b), (c), or (d) of this section.

(b) An information disclosure statement shall be considered by the

Office if filed by the applicant:

(1) Within three months of the filing date of a national

application;

(2) Within three months of the date of entry of the national stage

as set forth in Sec. 1.491 in an international application; or

(3) Before the mailing date of a first Office action on the merits,

whichever event occurs last.

Office if filed by the applicant after the period specified in paragraph

(b) of this section, provided that the information disclosure statement

is filed before the mailing date of either a final action under

Sec. 1.113, or a notice of allowance under Sec. 1.311, whichever occurs

first, and is accompanied by either:

(1) A statement as specified in paragraph (e) of this section; or

(2) The fee set forth in Sec. 1.17(p).

(d) An information disclosure statement shall be considered by the

Office if filed by the applicant after the period specified in paragraph

is filed on or before payment of the issue fee and is accompanied by:

(1) A statement as specified in paragraph (e) of this section;

(2) A petition requesting consideration of the information

disclosure statement; and

(3) The petition fee set forth in Sec. 1.17(i).

(e) A statement under this section must state either:

(1) That each item of information contained in the information

disclosure statement was cited in a communication from a foreign patent

office in a counterpart foreign application not more than three months

prior to the filing of the information disclosure statement; or

(2) That no item of information contained in the information

disclosure statement was cited in a communication from a foreign patent

office in a counterpart foreign application, and, to the knowledge of

the person signing the statement after making reasonable inquiry, no

item of information contained in the information disclosure statement

was known to any individual designated in Sec. 1.56(c) more than three

months prior to the filing of the information disclosure statement.

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(f) No extensions of time for filing an information disclosure

statement are permitted under Sec. 1.136. If a bona fide attempt is made

to comply with Sec. 1.98, but part of the required content is

inadvertently omitted, additional time may be given to enable full

compliance.

(g) An information disclosure statement filed in accordance with

this section shall not be construed as a representation that a search

has been made.

(h) The filing of an information disclosure statement shall not be

construed to be an admission that the information cited in the statement

is, or is considered to be, material to patentability as defined in

Sec. 1.56(b).

(i) Information disclosure statements, filed before the grant of a

patent, which do not comply with this section and Sec. 1.98 will be

placed in the file, but will not be considered by the Office.

[57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60

FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct.

10, 1997]

37CFR1.98

TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS

CHAPTER I--PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents

Subpart B--National Processing Provisions

Sec. 1.98 Content of information disclosure statement.

(a) Any information disclosure statement filed under Sec. 1.97 shall

include:

(1) A list of all patents, publications, or other information

submitted for consideration by the Office;

(2) A legible copy of:

(i) Each U.S. and foreign patent;

(ii) Each publication or that portion which caused it to be listed;

and

(iii) All other information or that portion which caused it to be

listed, except that no copy of a U.S. patent application need be

included; and

(3) A concise explanation of the relevance, as it is presently

understood by the individual designated in Sec. 1.56(c) most

knowledgeable about the content of the information, of each patent,

publication, or other information listed that is not in the English

language. The concise explanation may be either separate from the

specification or incorporated therein.

(b) Each U.S. patent listed in an information disclosure statement

shall be identified by patentee, patent number and issue date. Each

foreign patent or published foreign patent application shall be

identified by the country or patent office which issued the patent or

published the application, an appropriate document number, and the

publication date indicated on the patent or published application. Each

publication shall be identified by author (if any), title, relevant

pages of the publication, date and place of publication.

listed in an information disclosure statement are substantively

cumulative, a copy of one of the patents or publications may be

submitted without copies of the other patents or publications provided

that a statement is made that these other patents or publications are

cumulative. If a written English-language translation of a non-English

language document, or portion thereof, is within the possession, custody

or control of, or is readily available to any individual designated in

Sec. 1.56(c), a copy of the translation shall accompany the statement.

(d) A copy of any patent, publication or other information listed in

an information disclosure statement is not required to be provided if it

was previously cited by or submitted to the Office in a prior

application, provided that the prior application is properly identified

in the statement and relied upon for an earlier filing date under 35

U.S.C. 120.

[57 FR 2035, Jan. 17, 1992]