© 2002, Dawsey Co., LPA
October 2002

Each person participating in the prosecution of a patent application owes the United States Patent & Trademark Office (USPTO) a duty of candor and good faith by law under 37 CFR §1.56. This means that applicants are under a duty to disclose to the USPTO all information that is material to the examination of the application. As such, under 37 CFR §1.97, an Information Disclosure Statement (IDS) must by filed with the USPTO.

Patent attorneys are often asked what is considered to be “material” to the examination of an application. Under 37 CFR §1.56(b) information is material 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 in the pending application; or (2) it refutes, or is inconsistent with, a position the applicant takes in opposing an argument of unpatentability relied on by the USPTO, or in asserting an argument of patentability. This standard is based upon determinations of a reasonable USPTO Examiner.

Such material information is disclosed to the USPTO through the use of an IDS. An IDS should ideally be provided to the USPTO at the time the application is filed. However, an IDS may be filed within three months after an application is filed or before the mailing date of the first Office Action on the merits. An IDS may be filed later provided it is submitted prior to a final office action along with a statement meeting the requirements of 37 CFR §1.97(e) and the payment of a fee, currently $180.

It is important to note that while this requirement requires the disclosure of information known to those involved in the preparation of the application, it does not require applicants to search for such information. In other words, any information that you have or have used must be disclosed, but you don’t have to start a search for favorable or unfavorable material related to your application. Further, including materials in the IDS does not constitute an admission that they are relevant to the patentability of the application, so even adverse material may not necessarily be fatal.

Intentional failure to disclose all information relevant to the examination of an application results in a subsequently issued patent to be declared unenforceable for inequitable conduct. However, even gross negligence will not be held to be an intentional failure to disclose.

The duty to disclose is a continuous duty and exists for each claim of a pending application until it is cancelled or withdrawn from consideration. Therefore, even after the filing of an IDS additional material information must be submitted to the USPTO within three months of its discovery.

As with most things in life, when applying for a patent honesty is the best policy. Report all sources that you have used, even if they are unfavorable to your application. The penalty for non-disclosure is far more serious than dealing with adverse prior art, which may turn out to be not as bad as you might have thought. As a practical matter, keep copies of the materials you use while you are developing your patent. It is very frustrating at application time to have to make a backwards search for articles you know you have used, but can’t seem to find anymore.