37 CFR 1.56 (pre-AIA) — Duty to disclose information material to patentability
Ninth Edition, Revision 01.2024
[Editor Note: Para. (c)(3) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 *]
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- (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, with the assignee or with 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]
[ *See § 1.56 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
Cited authority
Cited by
- 1308 Withdrawal From Issue
- 1406 Citation and Consideration of References Cited in Original Patent
- 1414.02 Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012
- 1418 Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability
- 1448 Fraud, Inequitable Conduct, or Duty of Disclosure Issues
- 1504.04 Considerations Under 35 U.S.C. 112
- 1893.03(g) Information Disclosure Statement in a National Stage Application
- 1901.02 Information Which Can Be Relied on in Protest
- 2001 Duty of Disclosure, Candor, and Good Faith
- 2001.03 To Whom Duty of Disclosure Is Owed
- 2001.04 Information Under 37 CFR 1.56(a)
- 2001.06 Sources of Information under 37 CFR 1.56
- 2001.06(a) Prior Art Cited in Related Foreign Applications
- 2001.06(b) Information Relating to or From Copending United States Patent Applications
- 2001.06(c) Information From Related Litigation and/or Trial Proceedings
- 2001.06(d) Information Relating to Claims Copied From a Patent
- 2002.01 By Whom Made
- 2002.02 Must be in Writing
- 2004 Aids to Compliance With Duty of Disclosure
- 2005 Comparison to Requirements for Information
- 2010 Office Handling of Duty of Disclosure/Inequitable Conduct Issues
- 2012.01 Collateral Estoppel
- 2129 Admissions as Prior Art
- 2146 Pre-AIA 35 U.S.C. 103(c)
- 2280 Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302
- 2304.05 Common Ownership
- 602.01(b) Inventor’s Oath or Declaration in Application Filed Before September 16, 2012
- 609 Information Disclosure Statement
- 609.01 Examiner Checklist for Information Disclosure Statements
- 609.04(a) Content Requirements for an Information Disclosure Statement
- 609.04(b) Timing Requirements for an Information Disclosure Statement
- 609.05(a) Noncomplying Information Disclosure Statements
- 704.10 Requirements for Information
- 704.12(a) Relationship of Requirement for Information to Duty of Disclosure
- 704.14(a) Format of the Requirement
- 708.02 Petition To Make Special
- 708.02(a) Accelerated Examination
- 724 Trade Secret, Proprietary, and Protective Order Materials
- 724.01 Completeness of the Patent File Wrapper
- 724.03 Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02
- 724.05 Petition To Expunge Information or Copy of Papers in Application File
- 37 CFR 1.56 Duty to disclose information material to patentability
- 37 CFR 1.63 (pre-AIA) Oath or declaration
- 37 CFR 1.97 Filing of information disclosure statement
- 37 CFR 1.98 Content of information disclosure statement
- 37 CFR 1.105 (pre-AIA) Requirements for information
- 37 CFR 1.313 Withdrawal from issue
- 37 CFR 1.704 Reduction of period of adjustment of patent term