Let’s Talk Rule 56 Compliance.
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.
(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.
Accordingly, inequitable conduct requires an affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive. These are known as the materiality and intent elements of inequitable conduct. Generally, the more material a reference, the less the degree of intent that is required to prove inequitable conduct. Furthermore, the element of intent is generally inferred from the facts and circumstances surrounding the conduct, and is resolved by a judge (not a jury) under a “clear and convincing” standard.
Such an intentional violation of the duty of candor will render a patent obtained thereby invalid. Intentional breaches of the duty can also result in awards of attorney’s fees or treble (or triple) damages in exceptional cases, and even disciplinary action or disbarrment of the practitioner involved in such conduct.
Some non-limiting examples of inequitable conduct may include:
1.) Selective presentation of data or information (failed tests, contradictory information, etc.).
2.) Omission of a reference cited during prosecution of a related case, U.S. or foreign.
3.) Delay in citing material information or art.
4.) Nondisclosure of best mode of practicing the invention as of the date of filing.
5.) Nondisclosure of litigation that might affect patentability of pending claims.
6.) Submission of a highly material reference along with a much longer list of less relevant references in an attempt to hide the highly material reference. JW Note: Such a practice is called “burying” or “blizzarding” and may lead to an inference of intent to deceive. It remains to be seen, however, whether burying is still possible due to technological advances at the PTO. In particular, where references are provided to the Examiner in keyword-searchable format (e.g., PDFs), aren’t they more easily reviewed and the likelihood of a highly relevant reference being missed much less?
7.) Nondisclosure of known competitive products.
8.) Witholding or misleading as to a lack of scientific support for comments or assertions made by applicants.
Even if no finding of inequitable conduct is made, a simple allegation of inequitable conduct can be extremely costly for a client to defend against. For at least this further reason, even the appearance of such conduct should be avoided if at all possible.
JW Note: Allegations of inequitable conduct may be one of the most pertinent post-prosecution reasons why a practitioner would want to avoid the USPTO’s new “accelerated examination” program (a point which I had alluded to in this previous post on the program announcement). See also the excellent comment by Russ Krajec of the Anything Under the Sun blog. Thanks for the comment, Russ!
JW Note: See also “The Duty of Candor: What Is It and How to Comply With It” by Tamsen Valoir, PhD. Brought to my attention by a colleague (thanks Lydia!), I thought this an excellent paper on Rule 56 compliance.