What Is Rule 56 And The Duty Of Disclosure When Filing A Patent?
Rule 56, more technically known as 37 CFR §1.56 of the Manual of Patent Examining Procedure, establishes the duty of disclosure when filing a patent. All individuals involved in the filing and the prosecution of a patent application have a duty to disclose all known information related to the patentability of a pending claim. Rule 56 simply imposes such duty of disclosure (to the Patent Office), as such information is critical to the assessment of an invention's patentability. It is important to understand the nature of the duty of disclosure, as violating the provision can render a patent permanently unenforceable or invalid.
Do Patent Applications Require Disclosure?
In short, yes, they do. There is a duty of disclosure required for each and every patent application in the United States. The USPTO necessitates that all relevant information regarding the patent application be disclosed, so that the examining officer is able to assess the application holistically.This is mainly to relate any relevant information about the patent application that might alter its “patentability.”
Patentability, or the meeting of certain criteria necessary for a patent to be held legally valid, should be considered before moving forward with a patent application. The applicant is expected to assess any factors that may affect the patentability of their invention or intellectual property. One such factor is the existence of any information material relevant to its patentability. This is a long-winded way of saying that if the content or ideas of the patent have been discussed elsewhere, that information must be reported to the USPTO, as it may impact the claim.
What Is Considered Relevant Information Material?
We have established the duty of disclosure, but what precisely is “relevant information material”? To answer that question, we must skip ahead to a later part of the USPTO legislation. Under 37 CFR 1.56(a), it is important to consider:
Any prior art that is discussed or cited within another application filed through a foreign office
Any information within pending patent applications that is closely linked to or could have potentially influenced the current application
Let us take a closer look at what is included under each of these points.
Prior Art Cited In A Foreign Application
The phrasing of this can be a bit off-putting: “prior art cited within search reports of a foreign patent office in a counterpart application.” What is a foreign patent office? What is prior art?
This is addressed in Gemveto Jewelry Co., Inc. v. Lambert Bros., Inc., 542 F. Supp. 933, 216 U.S.P.Q. 976 (S.D.N.Y. 1982), in which a jewelry company filed various patent applications in France, the Netherlands, and five other countries in the 1960s. In two different applications, one called the Chirol patent and the other called the Matheret patent, Gemveto Jewelry Co. introduced new mounting and securing techniques for stones. Both proved unsuccessful, so the Gemveto returned to the drawing board, eventually filing another application, this time in the United States.
The issue was that Gemveto did not disclose the existence of these prior, failed patent applications. In this case, Gemveto Jewelry Co. did not initially disclose the other foreign applications, likely because they had proven unsuccessful or because they improved upon their techniques in the US application. Perhaps they deemed this information irrelevant to the current application. The New York trial attorneys inevitably found out about this, however, and they deemed the patent unenforceable due to a violation of the duty to disclose.
It should be noted that the USPTO only requires applicants to disclose prior art that is already known to them. This means that applicants are not expected to conduct a search of all pre-existing prior art.
Close Information Within A Pending Claim
An applicant should also account for any close information that could be associated with a pending patent claim. This is largely due to the fact that no patent examiner could possibly have knowledge of all prior applications. An applicant cannot assume that the examining officer knows of every claim that has passed through the USPTO. That would be an unreasonable assumption and burden on each examining officer. Thus, it is the duty of the applicant to disclose any prior information that relates to the current patent application.
This could include:
Applications filed by the same individual
Prior litigation or trial litigation surrounding the patent application or former patent applications filed by the same individual
Instances where a claim is copied or substantially copied from a prior patent application
In every situation, the applicant is given the burden of presenting the examiner with a full and complete picture of the application’s history, including any prior claims that informed it. At first, it may not seem prudent to disclose information regarding past applications. Oftentimes, however, the intellectual contributions and information put forth in those past applications are highly relevant to the current one.
Who Has a Duty To Disclose?
We have addressed the what and the why of duty of disclosure when filing a patent, but what about the who? Broadly, the USPTO states that any individual who is associated with the filing or the prosecution of a patent application has a duty to disclose. Those lines can be blurry, though. What does it mean to be associated with the filing or the prosecution of an application?
There are a few different parties who must adhere to the duty of disclosure provision, including:
Every inventor mentioned in the application by name,
Every attorney or agent who plays a role in preparing or prosecuting the application, and;
Any other person who is substantially involved in the preparation or prosecution of the application and who is associated with the inventor, applicant, or anyone obligated to assign the application
“Substantially involved” is slightly vague and can leave behind questions of which contributions are considered substantial in the eyes of the USPTO. The duty does not apply to typists, clerks, or similar individuals who assist with the application but are not directly involved in contributing to the application. Moreover, the duty of disclosure only applies to individuals, not organizations. While a corporation or institution would not be responsible for disclosing, any individuals within the corporation or institution who was substantially involved in the application is, indeed, responsible.
How Do You Satisfy The Duty Of Disclosure When Filing A Patent?
Understanding what information needs to be disclosed when filing a patent and who needs to disclose it is half the battle. The other half of the battle is successfully disclosing the relevant information pursuant to USPTO standards. To satisfy the duty of disclosure, applicants are required to file an Information Disclosure Statement.
What Is An Information Disclosure Statement?
An Information Disclosure Statement (IDS) is an official form created by the USPTO that must be used to disclose all relevant information material. It is required both for new patent applications as well as for the reissuing of a patent.
The USPTO is quite clear in their guidelines regarding the IDS, down to the timeline and necessary content to be included within the statement. The Office outlines that the duty of disclosure persists from the time the application is filed to the time the application is cancelled, withdrawn, or abandoned, if such a situation arises. As such, the USPTO will consider any IDS that is filed before the mailing date of any final rejection or action of the application.
This means that an IDS can be filed at any point during the application process, when any new information becomes available to the applicant. Of course, the sooner an applicant files the IDS, the better. As a rule of thumb, an applicant should disclose any information that could even slightly pertain to the patent application at hand.
What Should Be Included In The Information Disclosure Statement?
§1.98 of Rule 56 discusses the necessary content to be included in an Information Disclosure Statement. The USPTO states that the following information is required within any submitted IDS:
A comprehensive list of all patents, applications, publications, or other information previously submitted to the USPTO,
A copy of every foreign patent, cited pending unpublished application, and/or relevant publication that contributed to the current patent application, and
If an existing patent/patent application is not written in English, a translation or concise explanation of the relevant materials is necessary
Aside from the aforementioned content, applicants must report relevant patent numbers, associated inventors, dates of publication, and country of foreign patent applications. The IDS form has prompts for all necessary information and requires additional documentation to be marked and attached.
Chiefly, the USPTO is concerned that all patent applicants act in good faith and report any information that could impact the patentability of the invention or idea. Duty of disclosure when filing a patent is federal legislation. Failure to comply with this legislation can lead to the rejection of a patent or more serious legal consequences.
What Happens If I Fail To Disclose?
Time and time again, the courts have rendered patents entirely unenforceable due to a failure to disclose relevant information. If an inventor or substantial party involved in the application is aware of, but fails to submit, information that was material to the patentability of their invention, their patent will be rejected on the basis of fraud.
A finding of fraud, inequitable conduct, or any violation of the duty of disclosure will result in a patent being deemed unenforceable or invalid. To this point, the court in the Gemveto case states that disclosure is, “an all or nothing proposition.” This means that if an applicant fails to disclose, regardless of how small or seemingly unimportant the disclosure may be, the courts will not uphold the patent.
When Does The Duty Of Disclosure End?
The duty of disclosure when filing a patent does not end until an application has been cancelled or withdrawn from consideration or, alternatively, when the application is abandoned. In fact, under 37 CFR 1.501, disclosure can even happen after a patent has been granted. In such cases, a patentee or any member of the public may file a citation of any information they feel is relevant to the patent.
How Can An IP Law Attorney Help With Duty Of Disclosure When Filing A Patent?
The journey from filing an application to being granted a patent can be stressful, and inventors have enough on their plates. There is no avoiding the required paperwork and duty of disclosure when filing a patent application, but you are not alone in the process. It is natural to have questions regarding the duty of disclosure and patent applications. A patent attorney can help inventors avoid falling victim to fraud under the USPTO and any other potential pitfalls they may encounter along the way.