Duty of Disclosure to the
U.S. Patent and Trademark Office
What is the Duty of Candor and Good Faith?
Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the U.S. Patent and Trademark Office (USPTO), which includes a duty to disclose to the USPTO all information known to that individual to be material to patentability.
Who does the duty apply to?
Anyone who is substantively involved in the application, including: inventors, assignee and their employees, US/foreign patent attorneys/agents.
What information is “material”?
Information considered “material” includes any information that a reasonable patent examiner would consider important in deciding whether to allow an application. The most common instances of “material” information that is known by the applicant/attorney is (1) prior art cited in a corresponding foreign application; (2) prior art cited in a related US application; or (3) published documents by an inventor(s). Such “material” information should be cited to the USPTO in the appropriate manner. Failure to cite such “material” information could result in a patent being held unenforceable.