37 CFR 1.56 — Duty to disclose information material to patentability
Ninth Edition, Revision 01.2024
[Editor Note: Para. (c)(3) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]
- (a) A patent by its very nature is affected with a
public interest. The public interest is best served, and the most
effective patent examination occurs when, at the time an
application is being examined, the Office is aware of and evaluates
the teachings of all information material to patentability. 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
information exists with respect to each pending claim until the
claim is cancelled or withdrawn from consideration, or the
application becomes abandoned. Information material to the
patentability of a claim that is cancelled or withdrawn from
consideration need not be submitted if the information is not
material to the patentability of any claim remaining under
consideration in the application. There is no duty to submit
information which is not material to the patentability of any
existing claim. 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 manner prescribed by §§
1.97(b)-(d)
and
1.98
. 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. The Office encourages
applicants to carefully examine:
- (1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
- (2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
- (b) Under this section, information is material to
patentability 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; or
- (2) It refutes, or is inconsistent with, a
position the applicant takes in:
- (i) Opposing an argument of unpatentability relied on by the Office, or
- (ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
- (c) Individuals associated with the filing or
prosecution of a patent application within the meaning of this
section are:
- (1) Each inventor named in the application;
- (2) Each attorney or agent who prepares or prosecutes the application; and
- (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
- (d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
- (e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751, May 19, 1982, effective July 1, 1982; para. (c), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c)(3) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[ * The changes to para. (c)(3) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.56 (pre‑AIA) for para. (c)(3) otherwise in effect.]
Cited authority
Cited by
- 1134.01 Third Party Submissions Under 37 CFR 1.290
- 1308 Withdrawal From Issue
- 1414.01 Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012
- 1418 Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability
- 1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits
- 2001.01 Who Has Duty To Disclose
- 2001.04 Information Under 37 CFR 1.56(a)
- 2001.05 Materiality Under 37 CFR 1.56(b)
- 2001.06 Sources of Information under 37 CFR 1.56
- 2001.06(e) Information Relating to Regulatory Review
- 2003.01 Disclosure After Patent Is Granted
- 2005 Comparison to Requirements for Information
- 2011 Correction of Errors in Application
- 2014 Duty of Disclosure in Reexamination Proceedings and Supplemental Examination
- 2015 Duties of Disclosure and Reasonable Inquiry Arise in Dealings With Other Government Agencies
- 210 Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application
- 211 Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e)
- 211.01(b) Claiming the Benefit of a Nonprovisional Application
- 213 Right of Priority of Foreign Application
- 2148 Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 103
- 2158.01 Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 103
- 2258 Scope of Ex Parte Reexamination
- 2280 Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302
- 2730 Applications Filed on or After May 29, 2000; Grounds for Adjustment
- 2732 Reduction of Period of Adjustment of Patent Term
- 2818 Procedure after Conclusion of Supplemental Examination
- 2818.01 After Determination Finding a Substantial New Question of Patentability
- 2823 Differences Between an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 257 and an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 302
- 2920.05(d) Foreign Priority
- 2920.05(e) Benefit Claims Under 35 U.S.C. 386(c)
- 2920.05(f) Information Disclosure Statement in an International Design Application Designating the United States
- 402.06 Attorney or Agent Withdraws
- 602.01(a) Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012
- 602.03 Office Finds the Inventor’s Oath or Declaration Defective
- 604 Substitute Statements
- 609 Information Disclosure Statement
- 717.02(d) Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
- 37 CFR 1.55 Claim for foreign priority
- 37 CFR 1.56 (pre-AIA) Duty to disclose information material to patentability
- 37 CFR 1.63 Inventor’s oath or declaration
- 37 CFR 1.64 Substitute statement in lieu of an oath or declaration
- 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications
- 37 CFR 1.105 Requirements for information
- 37 CFR 1.290 Submissions by third parties in applications
- 37 CFR 1.625 Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion