Anticipate This!™ | Patent and Trademark Law Blog

Let’s Talk Rule 56 Compliance.

Posted in Practice Commentary by Jake Ward on September 10, 2006

The filing and prosecution of a patent application in the USPTO requires more than mere compliance with U.S. patent laws.  Everyone involved in drafting and prosecuting U.S. patent applications (including every inventor, attorney, and assignee) owes a duty of disclosure to the USPTO, also known as the duty of candor, under the Code of Federal Regulations Rule § 1.56. 

37 C.F.R. § 1.56: Duty to disclose information material to patentability.

(a) . . . .  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 all information known to that individual to be material to patentability as defined in this section. . . . 

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 [prescribed manner]. 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.

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