(354) Patent and Trademark Office
37 CFR Parts 1 and 10
[Docket No. 910764-1306]
RIN: 0651-AA27
Duty of Disclosure
Agency: Patent and Trademark Office, Commerce
Action: Notice of final rulemaking.
Summary: The Patent and Trademark Office (Office) is amending the rules
of practice in patent cases to (1) clarify the duty of disclosure for
information required to be submitted to the Office; (2) provide flexible
time limits for submitting information disclosure statements including
the requirement for a fee in certain cases; (3) eliminate consideration
of duty of disclosure issues by the Office except in disciplinary and
interference proceedings, and under other limited circumstances; and (4)
eliminate the striking of patent applications which are improperly
executed. The Office further is amending the Patent and Trademark Office
Code of Professional Responsibility to define as misconduct a failure to
comply with the rules on duty of disclosure. The rules as adopted strike
a balance between the need of the Office to obtain and consider all
known relevant information pertaining to patentability before a patent
is granted and the desire to avoid or minimize unnecessary complications
in the enforcement of patents.
Effective Date: March 16, 1992. These rules will be applicable to all
applications and reexamination proceedings pending or filed after the
effective date.
For Further Information Contact: By telephone Charles E. Van Horn
(703-305-9054) or J. Michael Thesz (703-305-9384) or by mail addressed
to Commissioner of Patents and Trademarks, Washington, D.C. 20231, and
marked to the attention of Charles E. Van Horn (Crystal Park 2 - Room
919).
Supplementary Information: A notice of proposed rulemaking on duty of
disclosure and practitioner misconduct published in the Federal Register
at 54 FR 11334 (March 17, 1989), and in the Patent and Trademark Office
Official Gazette at 1101 Off. Gaz. Pat. Off. 12 (April 4, 1989), was
withdrawn. On August 6, 1991, the Office published in the Federal
Register a notice of proposed rulemaking relating to duty of disclosure.
56 FR 37321 The notice was also published in the Official Gazette. 1129
Off. Gaz. Pat. Off. 52 (August 27, 1991). Sixty written comments were
received in response to the notice of proposed rulemaking. A public
hearing was held on October 8, 1991. Eleven individuals offered oral
comments at the hearing. The sixty written comments and a copy of the
transcript of the hearing are available for public inspection in the
Office of the Assistant Commissioner for Patents, Room 919, Crystal Park
II, 2121 Crystal Drive, Arlington, VA.
Familiarity with the notice of proposed rulemaking is assumed.
Changes in the text of the rules published for comment in the notice of
proposed rulemaking are discussed. Comments received in writing and at
the public hearing in response to the notice of proposed rulemaking are
discussed.
The rules as adopted shall take effect as to all applications and
reexamination proceedings either pending or filed on or after the
effective date of these rules. Thus, any information disclosure
statement that is filed on or after that date must comply with the
provisions of 1.97 and 1.98 to be entitled to consideration.
Changes in Text: The final rules contain several changes to the text of
the rules as proposed for comment. Those changes are discussed below.
Section 1.17(i)(1) has been changed from the proposed text to reflect
the recent increase in the amount of the fee for filing a petition from
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$120.00 to $130.00.
Section 1.56(a) has been clarified to indicate that the duty of an
individual to disclose information is based on the knowledge of that
individual that the information is material to patentability. A sentence
has been added to 1.56(a) to express the principle that the Office
does not condone the granting of a patent 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. In addition, 1.56(a) as proposed has been changed to
indicate that if all information material to patentability of any claim
issued in a patent is cited by the Office or submitted to the Office in
the manner prescribed by 1.97(b)-(d) and 1.98, the Office will
consider as satisfied the duty to disclose to the Office all information
known to be material to patentability, as contrasted to the broader duty
of candor and good faith. This rule does not attempt to define the
spectrum of conduct that would lack the candor and good faith in dealing
with the Office which is expected of individuals who are associated with
the filing or prosecution of a patent application.
In 1.56(b), the phrase "or being made of record" has been inserted
to make it clear that information is not material to patentability
within the meaning of 1.56 if it is cumulative to either information
already of record in the application or contemporaneously being made of
record by applicant. For example, there would be no benefit to the
Office for applicant to submit to the Office 10 different documents
having the same teaching simply because the information was not
cumulative to the information already of record.
The term "creates" has been replaced by the term "establishes" in
1.56(b)(1). In addition, the definition of a prima facie case of
unpatentability, as set out in the preamble of the notice of proposed
rulemaking, has been incorporated into the rule itself. A prima facie
case of unpatentability of a claim is established when the information
compels a conclusion that the claim is unpatentable
(1) under the preponderance of evidence, burden-of-proof
standard,
(2) giving each term in the claim its broadest reasonable
construction consistent with the specification, and
(3) before any consideration is given to evidence which may
be submitted in an attempt to establish a contrary conclusion of
patentability.
This prima facie standard conforms to the standard used by an
examiner to determine whether a claim is prima facie unpatentable.
Section 1.56(b)(2) has been modified from the text of the proposed
rule. The focus of this paragraph has been changed so that it now
relates to information which either refutes, or is inconsistent with, a
position that applicant takes in either
(1) opposing an argument of unpatentability relied on by the
Office, or
(2) asserting an argument of patentability.
The change from the proposed rule makes clear that information is
material when it either refutes, or is inconsistent with, a position
taken by applicant before the Office.
Section 1.97(e) has been changed from the proposed text to make it
clear that a certification could contain either of two statements. One
statement is that each item of information in an information disclosure
statement was cited in a search report from a patent office outside the
U.S. not more than three months prior to the filing date of the
statement. Under this certification, it would not matter whether any
individual with a duty actually knew about any of the information cited
before receiving the search report. In the alternative, the
certification could state that no item of information contained in the
information disclosure statement was cited in a communication from a
foreign patent office in a counterpart foreign application or, to the
knowledge of the person signing the certification after making
reasonable inquiry, was known to any individual having a duty to
disclose more than three months prior to the filing of the statement.
The changes to the text of 1.97(e) as proposed place the
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appropriate priority on getting relevant information to the Office
promptly, with minimum burden to applicant. The text of the proposal has
also been changed by adding the phrase "after making reasonable inquiry"
to make it clear that the individual making the certification has a duty
to make reasonable inquiry regarding the facts that are being certified.
For example, if an inventor gave a publication to the practitioner
prosecuting an application with the intent that it be cited to the
Office, the practitioner should inquire as to when that inventor became
aware of the publication before submitting a certification under
1.97(e)(ii) to the Office.
A new paragraph (h) has been added to the text of proposed 1.97.
The purpose of new paragraph (h) is to ensure that no one could construe
the mere filing of an information disclosure statement as an admission
that the information cited in the statement is, or is considered to be,
material to patentability as defined in 1.56(b). It is in the best
interest of the Office and the public to permit and encourage
individuals to cite information to the Office without fear of making an
admission against interest.
In 1.98(a)(2)(iii), the wording has been changed to make it clear
that the requirement to submit a copy of each item of information listed
in an information disclosure statement does not apply to the citation of
a U.S. patent application.
The requirement in proposed 1.98(a)(3) for a concise explanation
of the relevance of each item of information has been substantially
changed by limiting the requirement in two significant ways. First, as
adopted, the requirement is limited to information that is not in the
English language. Second, the explanation required is limited to the
relevance as understood by the individual designated in 1.56(c) most
knowledgeable about the content of the information at the time the
information is submitted to the Office. Where the information listed is
not in the English language, but was cited in a search report by a
foreign patent office, the requirement for a concise explanation of
relevance is satisfied by submitting an English language version of the
search report.
In 1.98(d), the proposed text has been changed by adding the
phrase "cited by or" to make it clear that legible copies of information
listed in an information disclosure statement need not be submitted in a
continuing application provided the information was either cited by or
submitted to the Office in a prior application. A distinction between
information cited by the Office or supplied by applicant to the Office
serves no useful purpose in this situation.
The text of proposed 1.555 has been modified to limit the
definition of information material to patentability in a reexamination
proceeding to the types of information that an examiner could use in a
reexamination proceeding to determine whether a claim was patentable,
and to adopt other changes that parallel changes made in 1.56.
Proposed 1.555(a) has been divided into two paragraphs. Paragraph
(a), as adopted, substantially parallels the text of 1.56(a) as
adopted. It indicates that the duty to disclose information to the
Office in a reexamination proceeding is a part of the duty of candor and
good faith that is owed to the Office by individuals transacting
business with the Office. It further states one way that an individual
may discharge the duty to disclose information material to patentability
in a reexamination proceeding - i.e., by filing an information
disclosure statement with the items listed in 1.98(a) as applied to
individuals associated with the patent owner in a reexamination
proceeding. Finally, the text of the rule has been changed to add a
sentence that expresses the principle that a patent should not be
granted on an application in connection with which fraud was practiced
or attempted on the Office or there was any violation of the duty of
disclosure through bad faith or intentional misconduct.
New paragraph (b) of 1.555 has been adopted to define information
material to patentability in a reexamination proceeding. Much like the
definition in 1.56(b), information is not material when it is
cumulative to information of record or being made of record in the
reexamination proceeding. Information is considered material when it
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satisfies either or both of the definitions in 1.555(b). Under
1.555(b)(1), information is material when it is a patent or printed
publication that establishes, by itself or in combination with other
patents or printed publications, a prima facie case of unpatentability
of a claim. This definition is limited to patents or printed
publications because a reexamination proceeding must be based on patents
or printed publications. 35 U.S.C. 302.
The definition of a prima facie case of unpatentability of a claim
pending in a reexamination proceeding has been provided in the rule. A
prima facie case of unpatentability is established when the information
compels a conclusion that a claim is unpatentable under the same
principles that are applicable during ex parte examination of a patent
application; namely
(1) under the preponderance of evidence, burden-of-proof
standard,
(2) giving each term in the claim its broadest reasonable
construction consistent with the specification, and
(3) before any consideration is given to evidence which may be
submitted in an attempt to establish a contrary conclusion of
patentability.
Finally, the definition of information material to patentability in
1.555(b)(2) has been added to parallel the provision in 1.56(b)(2).
After reviewing the Office policy on whether to consider duty of
disclosure and other inequitable conduct issues in interference
proceedings under 35 U.S.C. 135(a), including comments from the public
directed to the statement in the notice of proposed rulemaking that the
Office will not consider, evaluate, or decide fraud or other inequitable
conduct issues during an interference proceeding, a new Office policy
has been adopted. Effective October 24, 1991, fraud and inequitable
conduct issues will be considered when properly raised inter partes in
patent interference cases. 1132 Off. Gaz. Pat. Off. 33 (November 19,
1991). In addition, the Chairman of the Board of Patent Appeals and
Interferences has issued a notice that provides guidance on how an issue
of fraud or other inequitable conduct can be raised in an interference
proceeding. 1133 Off. Gaz. Pat. Off. 21 (December 10, 1991).
Response to and Analysis of Comments: Sixty (60 written comments were
received in response to the notice of proposed rulemaking. These
comments, along with those made at the public hearing, have been
analyzed. Some suggestions made in the comments have been adopted and
others have been rejected. Responses to the comments follow.
Comment 1. Nine comments indicated that the Office should not amend
1.56 since it is presently in conformance to the materiality standard
being applied by the Court of Appeals for the Federal Circuit. One
comment questioned what practical value of the proposed rule would
justify the burden of the change.
Reply: The amendment to 1.56 was proposed to address criticism
concerning a perceived lack of certainty in the materiality standard.
The rule as promulgated will provide greater clarity and hopefully
minimize the burden of litigation on the question of inequitable conduct
before the Office, while providing the Office with the information
necessary for effective and efficient examination of patent applications.
Comment 2. One comment stated that the present rules should be
maintained and strengthened since the public interest is hurt more by an
unjustly issued patent than by an unjustly denied patent. Another
comment disagreed and argued that an unjustly denied patent can do great
harm to society.
Reply: The Office strives to issue valid patents. The Office has both an
obligation not to unjustly issue patents and an obligation not to
unjustly deny patents. Innovation and technological advancement are best
served when an inventor is issued a patent with the scope of protection
that is deserved. The rules as adopted serve to remind individuals
associated with the preparation and prosecution of patent applications
of their duty of candor and good faith in their dealings with the
Office, and will aid the Office in receiving, in a timely manner, the
information it needs to carry out effective and efficient examination of
patent applications.
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Comment 3. Two comments stated that the rule should not permit
applicants to draft claims and a specification to avoid a prima facie
case of obviousness over a reference and then to be able to withhold the
reference from the examiner.
Reply: The comments reflect a correct reading of the rule in that
information is not material unless it comes within the definition of
1.56(b)(1) or (2). If information is not material, there is no duty to
disclose the information to the Office. The Office believes that most
applicants will wish to submit the information, however, even though
they may not be required to do so, to strengthen the patent and avoid
the risks of an incorrect judgment on their part on materiality or that
it may be held that there was an intent to deceive the Office.
Comment 4. One comment stated that promulgation of the proposed rule
would result in a significant decrease in the quantity of art cited to
the Office because there will be no duty to cite art relevant to a
pending claim.
Reply: The Office does not anticipate any significant change in the
quantity of information cited to the Office after promulgation of
amended 1.56. Presumably, applicants will continue to submit
information for consideration by the Office in applications rather than
making and relying on their own determinations of materiality. An
incentive remains to submit the information to the Office because it
will result in a strengthened patent and will avoid later questions of
materiality and intent to deceive. In addition, the new rules will
actually facilitate the filing of information since the burden of
submitting information to the Office has been reduced by eliminating, in
most cases, the requirement for a concise statement of the relevance of
each item of information listed in an information disclosure statement.
Comment 5. Several comments stated that an objective "but for" standard
would be preferable to the proposed rule. The objective "but for"
standard would presumably consider information as a court does in an
infringement proceeding with a clear and convincing, burden-of-proof
standard, giving the terms in each claim a narrow construction where
necessary to uphold validity.
Reply: The Office believes that amended 1.56 will provide a
reasonable balance between the needs of applicants and of the Office.
The suggested "but for" standard would not cause the Office to obtain
the information it needs to evaluate patentability so that its decisions
may be presumed correct by the courts. If the Office does not have
needed information, meaningful examination of patent applications will
take place for the first time in an infringement case before a district
court. Courts will become increasingly less confident of the Office's
product if they get the impression that practitioners and inventors can
routinely withhold information from the Office, or that practitioners
and inventors can make up their own minds about what is patentable. The
Office should decide, in the first instance, what is patentable and any
decision should be made with the best information available, including
that known by the applicant. The Office notes that the House of
Delegates of the American Bar Association twice, once in 1990 and again
in 1991, refused to adopt a resolution favoring adoption of the "but
for" standard.
Comment 6. One comment argued that proposed 1.56 does not relate to
"the conduct of proceedings in the Patent and Trademark Office" (35
U.S.C. 6(a)) since the Office does not intend to reject applications as
indicated by the cancellation of paragraphs (c) through (i) of current
1.56.
Reply: The amendment to 1.56 comes within the authority of the
Commissioner for establishing regulations. Norton v. Curtiss, 433 F.2d
779, 167 USPQ 532 (CCPA 1970). The Office has reserved its inherent
authority to reject an application under appropriate circumstances where
fraud or other inequitable conduct has occurred. Also, the Office will
consider fraud and inequitable conduct when properly raised in
interference proceedings under 35 U.S.C. 135(a). The Office will also
consider fraud and inequitable conduct in connection with attorney
conduct under 10.23(c).
Comment 7. One comment stated that 1.56 should require only
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anticipatory art to be submitted during examination of an application,
with a procedure such as reexamination being used after discovery in any
litigation on the patent has revealed all available art.
Reply: An application is examined under all appropriate sections of
Title 35, United States Code, and a presumption of validity attaches to
a patent with regard to all aspects of patentability, including
anticipation. 35 U.S.C. 282. Therefore, 1.56 should address more than
just the submission of anticipatory information, including information
relevant to patentability under 35 U.S.C. 103 and 35 U.S.C. 112.
Comment 8. One comment suggested that proposed 1.56 has some
dangerous implications since courts are going to find violations of the
duty of disclosure if 1.97 and 1.98 are not complied with
completely.
Reply: Section 1.56 provides that the duty of disclosure can be met by
submitting information to the Office in the manner prescribed by
1.97 and 1.98. Sections 1.97 and 1.98 are being amended so that
information will be submitted to the Office in the manner and at the
time which will facilitate consideration by the examiner. Applicants are
provided certainty as to when information will be considered, and
applicants will be informed when information is not considered. The
Office does not believe that courts should, or will, find violations of
the duty of disclosure because of unintentional non-compliance with
1.97 and 1.98. If the non-compliance is intentional, however, the
applicant will have assumed the risk that the failure to submit the
information in a manner that will result in its being considered by the
examiner may be held to be a violation.
Comment 9. Two comments stated that the Office should not delete the
offense of attempted fraud from the 1.56. The comments stated that
elimination of the reference to "gross negligence" in current 1.56
would be sufficient to protect the practitioner who delays submission of
information with no intent to deceive the Office. One of the comments
stated that the disciplinary rules alone are not sufficient to deter
attempted fraud or inequitable conduct.
Reply: The language of 1.56(a) and 1.555(a) has been modified to
retain the provisions of prior 1.56(d) to indicate that the Office
does not condone fraud, attempted fraud, or violation of the duty of
disclosure through bad faith or intentional misconduct.
Comment 10. One comment stated that the appropriate standards for the
duty of candor are analogous to fiduciary law which requires the
fiduciary to disclose not only known facts, but also facts which it
should have known, i.e., a negligence standard. The comment argued that
it was undesirable to measure duty of candor or fraud by a reduced
measure of "intent" instead of an objective negligence standard since
the Office is not bound by the U.S. Court of Appeals for the Federal
Circuit decision in Kingsdown Medical Consultants, Ltd. v. Hollister,
Inc., 863 F.2d 867, 9 USPQ2d 1384 (Fed. Cir. 1988) (en banc), cert.
denied, 490 U.S. 1067 (1989), and since the proposed standard is no more
objective than alternative standards but is simply narrower and more
certain. Another comment suggested that the Office should indicate that
there is no intention to change the Kingsdown ruling.
Reply: Section 1.56 has been amended to present a clearer and more
objective definition of what information the Office considers material
to patentability. The rules do not define fraud or inequitable conduct
which have elements both of materiality and of intent. The Office does
not advocate any change to the Kingsdown ruling.
Comment 11. Two comments stated that the proposed modification of
1.56 would make submission of information to the Office an implied
admission of the prima facie unpatentability of a claim. Several
comments suggested that a sentence should be added to proposed 1.56
to specify that submission of information to the Office under this
section shall not be deemed to be an admission or representation that
the information is material to patentability.
Reply: The suggestions in the comments have been adopted by modifying
1.97 which deals with submission of information to the Office. Paragraph
(h) of 1.97 now provides that the filing of an information disclosure
statement shall not be considered to be an admission that the
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information cited in the statement is, or is to be considered to be,
material to patentability as defined in 1.56.
Comment 12. One comment stated that the proposed 1.56 definition
would be difficult to apply in litigation in which a different
burden-of-proof standard is applied.
Reply: The definition of information material to patentability includes
standards which are familiar to the Federal courts and which are capable
of being handled like other issues.
Comment 13. One comment suggested that the last sentence of proposed
1.56( a), in which the Office encourages applicants to carefully examine
prior art cited in foreign search reports and the closest known
information, be removed from the rule and be placed in the preamble
discussion so as to avoid the interpretation that the sentence creates a
duty for applicants.
Reply: The suggestion is not adopted. The sentence does not create any
new duty for applicants, but is placed in the text of the rule as
helpful guidance to individuals who file and prosecute patent
applications.
Comment 14. Three comments stated that the language of proposed
1.56(a) required revision to remove all statements or suggestions which
might allow a court to consider a pending (i.e., unissued) claim for the
purpose of determining whether the duty of disclosure requirement was
met in view of the fact that the proposed rule was intended to indicate
that there is no duty to disclose information which is material to a
pending claim unless that claim ultimately issues in a patent. One
comment argued that a court might interpret "the duty of candor and good
faith" to be broader than the particular duty of disclosure specified in
other portions of the proposed rule.
Reply: The language of 1.56 and 1.555 has been modified to
emphasize that there is a duty of candor and good faith which is broader
than the duty to disclose material information. Section 1.56 further
states that "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."
Comment 15. One comment suggested that proposed 1.56(a) be modified
to clarify that both information and its materiality must be known
before there is a duty to disclose the information.
Reply: The Office considers the language of 1.56(a) to be
sufficiently clear in referring to a "duty to disclose to the Office all
information known to that individual to be material to patentability as
defined in this section." If information is known to be material, it
inherently must be known. Likewise, if information is not known to an
individual, there is no duty to disclose the information whether it is
material or not.
Comment 16. One comment stated that it should be made clear that "known"
is limited to contemporaneous knowledge since a practitioner may have
known something ten years ago but may not remember it presently.
Reply: Section 1.56 states that each individual associated with the
filing and prosecution of a patent application has a duty to disclose
all information known to that individual to be material to patentability
as defined in the section. Thus, the duty applies to contemporaneously
or presently known information. The fact that information was known
years ago does not mean that it was recognized that the information is
material to the present application.
Comment 17. One comment suggested that proposed 1.56(a) be modified
to state that the duty of disclosure ends when an application becomes
abandoned or allowed.
Reply: Paragraph (a) of 1.56 states that the duty to disclose
information exists until the application becomes abandoned. The duty to
disclose information, however, does not end when an application becomes
allowed but extends until a patent is granted on that application. The
rules provide for information being considered after a notice of
allowance is mailed and before the issue fee is paid ( 1.97(d)) and
for an application to be withdrawn from issue after the issue fee has
been paid. An application may be withdrawn from issue because one or
more claims are unpatentable ( 1.313(b)(3)) or an application may be
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withdrawn from issue and abandoned so that information may be considered
in a continuing application before a patent issues ( 1.313(b)(5)).
Comment 18. Three comments stated that the first two sentences of
proposed 1.56(a) should be deleted since rules should simply instruct
practitioners what to do without discussion of why they should do it or
the philosophy involved.
Reply: The suggestion has not been adopted since the sentences aid in
the understanding of the rule and will provide those involved in
enforcing patents with an indication of the policy on which the rule is
based.
Comment 19. One comment stated that 1.56(a)(2) and (c) should be
modified to refer to "individuals substantively associated with" the
filing or prosecution of the patent application.
Reply: The suggestion is not adopted since the proposed rule language is
clear and the suggested modification would create a redundancy with the
language of 1.56(c)(3). The individuals designated in 1.56(c)(1)
and (2) as being associated with the filing or prosecution of a patent
application within the meaning of the section are inherently
substantively involved in the preparation or prosecution of the
application.
Comment 20. One comment stated that proposed 1.56(b) should be
modified to clarify that information is not material if it is
cumulative to information already of record in an application or to
information concurrently being made of record.
Reply: The suggestion has been adopted by adding a reference to
information being made of record with regard to cumulative information
in 1.56(b) and 1.555(b).
Comment 21. One comment stated that the preamble discussion (of
1.56(b)) should indicate that test results in situations such as tests
involving biological systems may properly be submitted as averages
rather than as individual test runs.
Reply: Whether test results can be submitted as averages rather than as
individual test runs depends on whether doing so would provide to the
Office the information needed to make a proper determination on
patentability. If the actual results are provided, the examiner can make
an independent determination on whether some rejection is appropriate.
In some cases providing averages might be misleading, but in other cases
providing averages might be appropriate.
Comment 22. One comment stated that the definition of materiality in
proposed 1.56(b) imposes substantial new burdens on applicants who
would be required to disclose failed experiments, papers published less
than one year prior to filing and experimental public uses even if they
clearly are refutable and will not affect patentability. One comment
stated that the proposed rule would require applicants to incur added
expense for affidavits and comparison tests. Five comments stated that
the Office should not require applicants to present results from clearly
invalid tests since this would be contrary to usual scientific practice.
One comment argued that information should not be required to be
submitted if there was no doubt that it would not preclude
patentability, e.g., where common ownership existed so that the
exception of 35 U.S.C. 103, second paragraph, would apply.
Reply: The definition of materiality in 1.56 does not impose
substantial new burdens on applicants, but is intended to provide the
Office with the information it needs to make a proper and independent
determination on patentability. It is the patent examiner who should
make the determination after considering all the facts involved in the
particular case. The comments reflect that the Office objective of
clarifying what information the Office considers to be material has been
accomplished by the amendment of the rules.
Comment 23. One comment suggested that 1.56 should confine the duty
of disclosure to references known to applicant or the practitioner
representing applicant and not found in prior art materials in the
Office.
Reply: This suggestion is not adopted since information may be in the
Office but not in the application file. It is not reasonable to assume
that an examiner knows of a particular item of information or
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appreciates its relevance to a particular invention simply because it
exists somewhere in the Office.
Comment 24. One comment stated that the language "or in combination with
other information" should be removed from proposed 1.56(b)(1) because
it was unworkable to require an applicant to combine references against
its own claims, especially since, according to the commentator,
examiners and the Board of Patent Appeals and Interferences frequently
misapply the law. Another comment stated that the language creates an
open field for litigators to claim that an inordinate number of
references could be combined.
Reply: The rule does not require an applicant to combine references
against its own claims. The applicant can submit information to the
Office for the examiner's consideration whether the information is
considered material or not. The fact that the teachings of a large
number of references must be combined for a prima facie case of
obviousness does not by itself weigh against a holding of obviousness.
See In re Gorman. 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Comment 25. Four comments stated that the definition of "prima facie
case of unpatentability" 1.56(b)(1)) should be included in the rule
itself. One comment said that the definition should not be included in
the rule.
Reply: The definition has been included in the rule for clarity.
Comment 26. One comment stated that the proposed 1.56(b)(1) placed a
burden on the practitioner to analyze references that is inappropriate
and contradictory to a practitioner's responsibility to his client.
Reply: The rule itself does not place a burden on the practitioner to
analyze references. Information can be submitted to the Office in
accordance with 1.97 and 1.98, and the examiner will consider the
references.
Comment 27. One comment questioned whether an applicant would be
charged with withholding material information if the "other information"
( 1.56(b)(1)) necessary to cause an undisclosed reference to become
material is unknown to the applicant. Another comment suggested that the
language should be changed to read "other known information" to show
that the information must be known to applicant to give rise to a duty
of disclosure.
Reply: Paragraph (b) of 1.56 defines information material to
patentability. While information may be material under the definition,
there is no duty on an individual to disclose the information if the
information is unknown to the individual ( 1.56(a)).
Comment 28. One comment suggested that defining materiality in
1.56(b) in terms of prima facie unpatentability would permit a
conspiracy of silence in which (1) the applicant knows of information
but is incapable of making the legal analysis to determine whether the
information is material and (2) the patent practitioner, who is equipped
to determine whether information is material, does not know of the
information and does not ask. Thus, it is argued there would be no
violation of the duty of disclosure which requires knowledge of both
information and its materiality.
Reply: The Office has set forth what information should be submitted so
that the Office can make a proper determination on patentability. The
term "conspiracy" has the connotation of unlawfulness which would not be
consistent with the duty of candor and good faith required in dealings
with the Office.
Comment 29. One comment suggested that proposed 1.56(b)(1) should be
revised to read "in combination with other information already of record
in the application" to avoid the possibility that undisclosed material
could be considered material in subsequent litigation when combined with
information not known at the time of the prosecution to any person
substantively involved in the preparation or prosecution of the
application.
Reply: Paragraph (a) of 1.56 makes it clear that the Office
recognizes that the duty to disclose material information is limited to
such information which is known by an individual substantively involved
in the preparation or prosecution of the application. Thus, while
information may be material under the definition of 1.56(b)(1), there
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can be no duty to disclose the information if it is material only in
combination with unknown information.
Comment 30. One comment stated that proposed 1.56(b) should be
modified so that paragraph (b)(1) refers to information that renders a
claim unpatentable ("but for"), paragraph (b)(2) remains as proposed,
and a paragraph (b)(3) is added to include the definition of materiality
as "the closest information over which any pending claim patentably
defines." This comment suggested that this modified definition would
have the advantage of not requiring the applicant to submit references
which applicant knows are immaterial and to then engage in "straw man"
arguments based on such references.
Reply: The suggested modification to 1.56 has not been adopted. The
suggested language would seemingly require information to be filed in
each application, whether the information is relevant or not, since the
"closest information" would be required. Section 1.56 does not require
information which is not relevant to be submitted, but only information
which meets the definition of material as set out in the rule.
Comment 31. One comment stated that if proposed 1.56(b)(1) is
promulgated, there would be no need for proposed 1.56(b)(2) with
regard to information which would make a prima facie case of
unpatentability and other information required by paragraph (b)(2) might
be obscure. Another comment argued that paragraph (b)(2) was
unnecessary, confusing and ambiguous and suggested changes in the
language to make the requirement clear and less ambiguous.
Reply: The suggestion as to the language change to 1.56(b)(2) has
been adopted. The final rule language avoids the perceived problem of
requiring an applicant to submit information supporting a position taken
by the examiner. It is not appropriate, however, to eliminate paragraph
(b)(2) because it is an essential part of the definition of information
material to patentability and will help to ensure that all material
facts are brought to the attention of the examiner during the
examination process.
Comment 32. One comment questioned the language of proposed
1.56(b)(2) as to how an applicant could consider a prior art reference
as supporting a position of unpatentability taken by the Office while at
the same time disputing that interpretation.
Reply: The language of 1.56(b)(2) has been modified to clarify that
information is material to patentability if it refutes, or is
inconsistent with, a position the applicant takes in (1) opposing an
argument of unpatentability relied on by the Office, or (2) asserting an
argument of patentability.
Comment 33. One comment stated that 1.56(b)(2) was flawed in
requiring a duty to conduct a file search to make sure that no
information exists which even arguably contradicts a position taken or
to be taken in response to the examiner, or which supports the
examiner's position which may be improper.
Reply: Section 1.56(b)(2) does not require a search of files. Under
1.56(a), the duty of disclosure is confined to that information which is
known to an individual to be material as defined in paragraph (b).
Comment 34. One comment stated that proposed 1.56(c) should be
modified so that the duty of any individual designated as having a duty
of disclosure would terminate when such individual ceases to be
substantively involved in the preparation or prosecution of the
application. The comment used, as an example, an inventor who would not
be aware of art cited by the examiner which would cause information
known to the inventor to fall within the definition of materiality for
the first time.
Reply: The suggestion in the comment is not adopted. The duty to
disclose information material to patentability rests on the individuals
designated in 1.56(c) until the application issues as a patent or
becomes abandoned. Paragraph (a) of 1.56 makes it clear, however,
that each individual has a duty to disclose only information which is
known to that individual to be material.
Comment 35. One comment stated that proposed 1.56(c)(3) should not
include the assignee, or anyone to whom there is an obligation to assign
the application, in the class of those who have a duty to disclose
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material information since there might be a "witch hunt" during
litigation to find one employee with knowledge of, or possession of,
information that should have been disclosed.
Reply: No modification to 1.56(c)(3) is needed since 1.56 sets
forth that only individuals who are associated with the filing and
prosecution of a patent application have a duty of candor and good
faith, including a duty to disclose to the Office all information known
to be material to patentability.
Comment 36. One comment stated that proposed 1.56(d) should be
revised to expressly allow an inventor to satisfy the duty by disclosing
information to the practitioner who prepares or prosecutes the
application so that redundant information disclosure statements will not
be required from both the inventor and the attorney or agent.
Reply: The suggestion in the comment is not adopted since the duty as
described in 1.56 will be met as long as the information in question
was cited by the Office or submitted to the Office in the manner
prescribed by 1.97(b)-(d) and 1.98 before issuance of the patent.
Statements from both an inventor and the practitioner are not required
to be submitted.
Comment 37. One comment stated that proposed 1.52(c) and 1.67(c)
should be modified to either (1) expressly permit alterations to be made
in an application subsequent to the signing of the oath or declaration
if a supplemental oath or declaration is later submitted, or (2) more
properly, prohibit such alterations since if alterations are desirable,
they can be made and the application can be filed with an unsigned oath
or declaration. Another comment stated that willfully filling out false
oaths should never be condoned.
Reply: The Office does not condone willfully filling out false oaths.
Further, 10.23(c))(11) indicates that the Office considers it
misconduct for a practitioner to knowingly file or cause to be filed an
application containing a material alteration made after the signing of
an accompanying oath or declaration without identifying the alteration.
The Office will not consider striking an application in which an
alteration was made, but a supplemental oath or declaration is required
to be filed in an application containing alterations made after the
signing of the oath or declaration.
Comment 38. One comment stated that the implementation of proposed
1.63(b)(3) and 1.175(a)(7) allows for a two-month delay in the
deadline for requiring declarations complying therewith.
Reply: The averments in oath or declaration forms presently in use that
comply with the previous 1.63 or 1.175 will also comply with the
requirements of the new rules. Therefore, the Office will continue to
accept the old oath or declaration forms as complying with the new rules.
Comment 39. Five comments questioned the need for the proposed rules
since statistics show that information disclosure statements are
submitted early in prosecution and questioned what new service is being
provided for the proposed fee in 1.97.
Reply: The Office desires to continue to encourage information to be
submitted promptly so that it can be considered by the examiner when the
first Office action is prepared. Some people have expressed a desire to
have the option of waiting to submit information until after the first
Office action, without concern that they will be subject to a charge of
inequitable conduct. Section 1.97(c), as amended, will provide this
option to applicants in that information will be considered later than
three months after the filing date of the application ( 1.97(a) prior
to amendment) without a showing of promptness (prior 1.99). The fee
will compensate the Office for the added expense caused by the late
submission of the information and will serve as a disincentive to the
intentional withholding of information even for a short period of time.
Comment 40. Two comments suggested that proposed 1.97(a) be modified
so that the mechanism of proposed 1.98 would not be the only
acceptable technique for submitting information.
Reply: The Office has set forth the minimum requirements for information
to be considered in 1.97 and 1.98. These rules will provide
certainty for the public of exactly what the requirements are, when the
Office will consider information and when the Office will not consider
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information. Thus, applicants are provided with means for complying with
the duty of disclosure by following the rules. If information is
submitted in a manner so that it is not considered by the Office,
applicant will assume the risk that a court might find a violation of
the duty of candor and good faith which includes the duty to disclose
material information.
Comment 41. Four comments suggested that information which is recognized
by applicant as being material after the period set in proposed
1.97(b) as the result of prior art cited by the examiner should be
permitted to be submitted to the Office without the fee set forth in
1.17(p), the certification or the petition fee required by 1.97.
Reply: The suggestion in the comments is not adopted since it would
require a certification, e.g., why the information was just recognized
as being material, and would unduly complicate the rules and the
procedures for considering information submitted by applicant.
Applicants can avoid or, at least, minimize the problem by submitting
information which is known to be relevant to the application even though
it is not yet recognized as being required to be submitted because it is
material to patentability. The fees charged are to compensate the Office
for the additional work that will be necessary when information is
submitted during an advanced stage of the examination process.
Comment 42. Two comments suggested that the period for submitting
information set in proposed 1.97(b) be changed to be two months from
the issuance of the Official Filing Receipt to avoid information
disclosure statements being misrouted in the Office.
Reply: The suggestion in the comment is not adopted. The date that the
Filing Receipt is mailed is not maintained in the application file so
there would be administrative difficulty in determining when a fee or
certification is required to be filed under the new rule. An application
can be filed with a self-addressed return postcard so that applicant can
obtain the serial number assigned to the application very soon after
filing. Further, information may be filed under 1.97(b) before the
mailing of a first Office action on the merits even if this occurs later
than three months after the application filing date.
Comment 43. One comment questions whether 1.97(b) or 1.97(d)
applies in the event of issuance of a final rejection within three
months of the filing of an application. The comment indicated that
paragraph (b) should apply in this situation.
Reply: Paragraph (b) would apply in this situation since the paragraph
specifies that information may be filed within three months of the
filing date of the application or before the mailing date of a first
Office action on the merits, whichever event occurs last. Thus,
information would be considered pursuant to 1.97(b) if it was filed
within three months of the filing date of the application even if a
final rejection was mailed prior to three months from the filing date.
Comment 44. One comment stated that proposed 1.97(b)(1) should be
clarified to indicate that "the filing of a national application"
includes "a continuing application which replaces the original
application."
Reply: The suggested modification has not been adopted since it is not
necessary for clarity. The term "national application" includes
continuing applications in this and the other patent rules. It is not
desirable to add the suggested language to all occurrences of the term
"application" in the rules or to raise the implication that continuing
applications are not included in the term in other rules by adding the
suggested language to this rule.
Comment 45. One comment stated that proposed 1.97 should be changed
to state that if a responsible party becomes aware of material
information less than three months before issuance of an Office action,
that information will be considered timely filed if it is submitted
together with the response to the action. The comment also stated that
the Office could go farther and implement a rule which specifies that
such information will be considered timely submitted if it reaches the
examiner before the response to the Office action is taken up for
consideration. Three other comments stated that the Office should accept
information disclosure statements with responses to Office actions, with
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one comment arguing that there is no benefit in submitting two papers
where one would suffice.
Reply: The suggestions in the comments are not adopted. The rule as
proposed and promulgated has the advantage of being relatively easy to
comply with and administer. Information should be submitted promptly so
that the examiner will have the option of reviewing the information and
withdrawing or revising the Office action. Requiring information to be
submitted promptly contributes to the efficiency of the examination
process.
Comment 46. One comment stated that there should be no fee in 1.97
associated with the filing of an information disclosure statement since
this might impact negatively on the submission of material information;
rather, it would be sufficient to permit material information submitted
subsequent to a non-final action to support a final rejection in the
next action, in the absence of the certification proposed in the rules.
Another comment, however, stated that the proposed fee requirement would
not be a disincentive to submission of prior art, but would force
examiners to consider certain art which under current practice often is
not made of record, but instead, requires the filing of a continuation
application.
Reply: The fee required in the rule will serve both to cover additional
expense caused the Office by the late submission of information and will
also serve as a disincentive to failing to cooperate in submitting
information early in the prosecution of an application rather than as a
disincentive to submitting information at all.
Comment 47. One comment questioned whether information in an information
disclosure statement submitted during the period set forth by proposed
1.97(c) could be used by an examiner to make the next action final if
the statement was submitted with a certification under 1.97(e).
Reply: Information submitted with a certification during the period set
forth in 1.97(c) will not be used to make the next Office action
final on unamended claims since in this situation it is clear that
applicant has submitted the information to the Office promptly after it
has become known and the information is being submitted prior to a final
determination on patentability by the Office.
Comment 48. One comment stated that it was unfair for the Office to
require a fee for considering information pursuant to proposed
1.97(c) and then also be able to use the information in making the
Office action final.
Reply: The policy is not considered to be unfair. If information is
submitted during the period set forth in 1.97(c) without the
certification, the fee will compensate the Office for extra work that
may be caused by the failure to submit information promptly. If the cost
for this extra work were not placed upon the applicant in this
situation, the cost would have to be borne by all applicants through
payment of higher fees. The possibility that the next Office action may
be made final will further encourage prompt disclosure of information to
the Office.
Comment 49. One comment suggested that information should be considered
( 1.97(c)) after final rejection, since this is different from after
allowance when the Office would have to go back and reconsider its work.
Two comments stated that proposed 1.97(c)(1) should not penalize
applicants who receive a foreign search report after a final rejection
is made in the application and that the certification under 1.97(e)
should be available until an advisory action after final rejection or a
notice of allowability occurs in the application. Another comment stated
that final action may not even be on the merits but merely
administrative.
Reply: The suggestions in the comments are not adopted. Both a notice of
allowance and a final rejection represent a final Office decision on
patentability. Information considered after either of these actions may
require the Office to alter its position. After either of these actions,
information will be considered only if it is submitted promptly in
accordance with 1.97(d) or is submitted in a refiled application. It
should be noted that information cited in a foreign search report, if
cited to the Office within three months of the date on the search
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report, will be considered by the Office if filed before payment of the
issue fee.
Comment 50. One comment stated that proposed 1.97(d) would result in
unequal treatment of U.S. inventors who file first in the Office as
compared to foreign inventors who file first in a foreign country since
the latter will have the results of the search made by the foreign
examining country earlier in the pendency of the U.S. application. Six
comments suggested that a U.S. inventor should have the ability to make
the certification of 1.97(e) and to have the Office consider the
information, regardless of the stage of prosecution at which information
from a foreign office is submitted.
Reply: It should be noted that the certification of 1.97(e) can be
made and information considered by the Office until the issue fee is
paid on the application. After the issue fee has been paid on an
application, it is impractical for the Office to attempt to consider
newly submitted information. The application may be withdrawn from issue
at this point, however, pursuant to 1.313(b)(5) so that the
information can be considered in a continuing application, or pursuant
to 1.313(b)(3) if applicant states that one or more claims are
unpatentable over the information that is cited. It is further noted
that it is applicants, not the Office, who make decisions on when and in
which countries to file an application. U.S. inventors who may desire to
seek patent protection in foreign countries have the ability to utilize
the provisions of the Patent Cooperation Treaty and to delay the
requirement to enter the national stage until after a search report on
the invention is made.
Comment 51. One comment questioned whether a certification under
1.97(e) could properly be made in situations where information known by
the applicant but not considered material is cited by a foreign patent
office more than three months later than the first knowledge by
applicant.
Reply: The language of 1.97(e) has been modified to permit a
certification to be made in the situation described in the comment. If
an item of information is submitted within three months of being cited
in a communication from a foreign patent office in a counterpart foreign
patent application, the certification can be properly made regardless of
any individual's previous knowledge of the information.
Comment 52. One comment stated that the three-month time period for
submitting information from foreign patent offices under proposed
1.97(e) might be too short because not all foreign offices provide
copies of references and that the Office should provide for a petition
in unusual circumstances. Five comments stated that a three-month time
limit for filing foreign search reports is not reasonable but rather
that six months would be more reasonable.
Reply: The Office has chosen the three month time period as appropriate
in view of all the factors involved in obtaining information and in the
examination process. It should be noted that Office actions typically
set a three-month shortened statutory period for response. A response to
an Office action generally requires more time for preparation than is
involved in the submitting of a foreign search report and copies of the
documents cited.
Comment 53. Five comments suggested that 1.97(e) should permit a
certification to be made if an individual knew of information for more
than three months before it was filed but did not recognize its
materiality or relevance to the application.
Reply: The suggestion in the comments is not adopted. The Office desires
to encourage prompt evaluation of information as to materiality by
applicants and the Office so as to contribute to the efficiency and
effectiveness of the examination process. It should be noted that an
applicant is not required to delay the submission of information while
evaluating materiality, but can submit the information pursuant to
1.97 and 1.98.
Comment 54. One comment stated that proposed 1.97(e) should be
clarified to specify that the certificates can be made regardless of the
source of the information being submitted, so long as it is disclosed
within three months of receipt. One comment stated that the three-month
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period of proposed 1.97(e) should be measured from the receipt date
of a communication from a foreign patent office.
Reply: A certification under 1.97(e) can be made if each item of
information was cited in a communication from a foreign patent office in
a counterpart foreign application not more than three months prior to
filing the statement. A certification can also be made if no item of
information was cited in a communication from a foreign patent office in
a counterpart foreign application or was known to any individual
designated in 1.56(c) more than three months prior to filing the
information disclosure statement. The Office wishes to encourage prompt
evaluation of the relevance of information and to have a date certain
for determining if a certification can properly be made. Although it is
recognized that an individual actually becomes aware of the information
in the communication from a foreign patent office sometime after it was
mailed, the mailing date of such a communication, if it occurs prior to
a first awareness of the same information, would determine the date for
filing of an information disclosure statement without a fee. The Office
is willing to absorb any additional cost in considering such information
relevant to patentability after the time set in proposed paragraph (b)
only when it is clear that an applicant is diligent in providing the
information to the Office.
Comment 55. One comment stated that the cost of making a certification
under 1.97(e) would be more than the $200.00 fee proposed where no
certification is made due to difficulties in obtaining information from
foreign clients. The comment suggested that the rule provide for (1) the
opportunity to provide documentation (as opposed to certification)
illustrating when the information was received, and (2) the opportunity
to submit information with increasing fees depending on when in the
periods of 1.97(c) and (d) the information is submitted.
Reply: The suggestions in the comment are not adopted since they would
add undue complexity to the rules and procedures. Further, the suggested
provision of documentation, which presumably would be reviewed by
someone in the Office, would probably add considerably to the overall
expense of filing an information disclosure statement. No other comments
indicated a desire for increasing fees depending on when the information
is submitted.
Comment 56. Two comments stated that proposed 1.97(e) is ambiguous in
using the language "to the knowledge of the person signing the
certification" in that it could refer to "information and belief,"
"actual knowledge of the facts" or "no knowledge to the contrary." One
comment stated that certifications should be able to be made on
information and belief by a U.S. attorney or agent submitting a material
reference received from a foreign patent attorney or agent, rather than
requiring a certification from the foreign individual. Another comment
suggested that the period should be calculated from when the applicant
either knew or could have known of the reference because the U.S.
attorney should not be penalized for delays from their foreign patent
associates.
Reply: The certification under 1.97(e) should be made by a person who
has knowledge of the facts being certified. The certification can be
made by a practitioner who represents a foreign client and who relies on
statements made by the foreign client as to the date the information
first became known. A practitioner who receives information from a
client without being informed whether the information was known for more
than three months, however, cannot make the certification without
making reasonable inquiry.
Comment 57. One comment stated that the language of proposed
1.97(e) would preclude the use of the certification in an application by
corporations whose practitioners have over the years reviewed thousands
of patents and technical publications, even though they are unaware of
the relevance of any one thereof to the application.
Reply: The language of 1.97(e) is not intended to preclude use of the
certification by representatives of corporations. The certification can
be based on present, good faith knowledge about when information became
known without a search of files being made. The Office, however, does
desire to have information considered promptly by applicants as to
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materiality and to have information submitted to the Office early in the
prosecution of an application.
Comment 58. One comment suggested that proposed 1.97(e) should permit
certification only as to information submitted within four months of
receipt from a foreign patent office, with all other late-submitted
information requiring a fee so as to not open a legal quagmire implicit
in the proposed certification requirement.
Reply: The suggestion in the comment is not adopted. The certification
set forth in 1.97(e) is preferable since it provides the avoidance of
the payment of a fee by a person who is submitting information promptly
to the Office. An applicant has the option under the circumstances
described in 1.97(c), however, to not make the certification and to
pay the fee instead if so desired.
Comment 59. One comment suggested that proposed 1.97(f) be modified
to specify that not less than one month will be given if a bona fide
attempt is made to comply with 1.98 but part of the required content
is omitted. Another comment suggested that 1.97(f) should state that
the Office will give (rather than may give) additional time for
compliance with 1.98.
Reply: The suggestions in the comments are not adopted. The language of
1.97(f) parallels present 1.135(c) since the practice and
considerations are similar for both rules. The Office intends to provide
one month to comply with 1.98 where a bona fide attempt has been made
to do so.
Comment 60. One comment stated that proposed 1.97(f) should specify
that the Office shall inform the applicant if a reference will not be
considered due to noncompliance with 1.98 so as to avoid any argument
in litigation that a certain reference was not considered due to
clerical noncompliance.
Reply: The Office plans to notify applicants in accordance with
1.97(f) and (i) if submitted information will not be considered. The
examiner will also indicate in the application record what information
has been considered. Further details will appear in the Manual of Patent
Examining Procedure in due course.
Comment 61. One comment suggested that proposed 1.97(g) should be
modified to state that the filing of an information disclosure statement
shall not be construed as a representation that no other material
information exists such as is set forth in current 1.97(b).
Reply: The suggestion in the comment has not been adopted since
referring to "no other material information" would imply that the
information being submitted was admitted to be material. There is no
requirement that information being submitted be material to the
application.
Comment 62. One comment suggested that proposed 1.97(h) be modified
to state that information not considered by the Office will be deemed in
all respects to have not been submitted by the applicant since this
would make a noncompliant submission clearly not a fulfillment of the
duty of candor.
Reply: The suggestion in the comment is not adopted. The Office has no
need or desire to rule on lack of fulfillment of the duty of candor in
such a situation. The rules are drafted such that 1.56 sets forth
what information is material to patentability and 1.97 and 1.98 set
forth procedures to assure consideration of information by the Office.
Comment 63. One comment stated the Office has a duty to consider
information even if this involves withdrawing an application from issue
or publishing a cancellation notice and that proposed 1.97(h) should
be changed to so state. Another comment stated that it would be an
abdication of the duty that the Office owes to the public for
information in the file to be ignored since issuance of an invalid
patent can be used to discourage others in the field. The comment
suggested that the Office should leave in doubt whether the information
will be considered or not.
Reply: It is necessary for the Office to balance its need and desire to
consider all information relevant to an application with its need for an
efficient operation and its capability to consider information at
various stages in the prosecution of an application. The Office is
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setting forth when information will and will not be considered to
provide certainty for the public.
Comment 64. One comment requested information on how a United States
patent application or other information ( 1.98(a)(1)(iii)) should be
listed on a PTO 1449 form.
Reply: The PTO 1449 has been drafted so as to provide spaces for listing
documents which are available to the public and which will be printed on
the patent at issuance. Other information should be listed separately
from the PTO 1449 form.
Comment 65. One comment stated that 1.98(a)(2)(i) should not require
the submission by applicants of United States patents listed in an
information disclosure statement since the Office is better equipped to
provide examiners with copies of those documents than inventors and
their attorneys. Alternatively, the comment suggested that the Office
should establish a procedure whereby an order for the Office to provide
the copies of the patents at the usual fee can accompany the information
disclosure statement.
Reply: At the present time, when the Automated Patent System has not
been fully implemented, the overall cost of the Office obtaining copies
of patents and associating them with application files would be greater
than for applicants to provide copies with information disclosure
statements. Presumably, the applicant would be using a copy of the
patent in preparing the statement and could easily make a copy for
submission to the Office.
Comment 66. One comment suggested that 1.98(a)(2)(iii), as proposed,
be clarified by substituting "except that no copy of a U.S. patent
application need be included" for the proposed phrase "except a U.S.
patent application."
Reply: The suggested clarification to the language of the rule has been
adopted.
Comment 67. A number of comments objected to the requirement in
1.98(a)(3) for a concise explanation of the relevance of all items of
information being submitted.
Reply: In response to the comments, 1.98(a)(3) has been modified to
require a concise explanation only of patents, publications or other
information listed in an information disclosure statement that are not
in the English language. Applicants may, if they wish, provide concise
explanations of why English-language information is being submitted and
how it is understood to be relevant. Concise explanations are helpful to
the Office, particularly where documents are lengthy and complex and
applicant is aware of a section that is highly relevant to patentability.
Comment 68. Five comments stated that the proposed rules should be
modified to state that if information is being submitted from a foreign
search report, the requirement for a concise explanation in proposed
1.98(a)(3) may be satisfied by submitting an English-language version of
the search report.
Reply: The language of 1.98(a)(3) has been modified so that no
concise explanation is required for information submitted in the English
language. The concise explanation requirement for non-English language
information may be met by the submission of an English language version
of the search report indicating the degree of relevance found by the
foreign office. It is not necessary that this detail be included in the
rule.
Comment 69. Five comments questioned whether the requirement in proposed
1.98(a)(3) would be satisfied by a statement that the references were
cited in the prosecution of a parent application.
Reply: The requirement in 1.98(a)(3) for a concise explanation of
non-English language information would not be satisfied by a statement
that a reference was cited in the prosecution of a parent application.
The concise explanation must explain the relevance as presently
understood by the person designated in 1.56(c) most knowledgeable
about the content of the information.
Comment 70. One comment suggested that proposed 1.98(a)(3) should be
modified to require a concise explanation of "what is believed to be"
the relevance of information listed to avoid the accusation of violation
of duty of disclosure merely because more relevant portions of the
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information are later found. Another comment suggested that the concise
explanation should state what is "reasonably understood by the person
submitting the statement." Another comment stated that the applicant
should be required to explain (1) only what is understood or believed
about the item of information at the time the disclosure is made, or (2)
why the item is listed.
Reply: The suggestions in the comments have been substantially adopted
in modifying the language of 1.98(a)(3).
Comment 71. One comment stated that proposed 1.98(b) should not
require the date (unless material) and place of publication of journal
articles since such information is not given on search reports from
foreign patent offices or on journals published by the American Chemical
Society, which just give the year. Another comment indicated that
sometimes it is not clear where the place of publication is.
Reply: The suggestions in the comments are not adopted. The date of
publication is necessary for the Office to be able to determine if the
information may be used in a rejection of the claims in an application.
The place of publication refers to the name of the journal, magazine or
other publication in which the article was published, which should be
available in the vast majority of cases.
Comment 72. One comment suggested that 1.98(c) should not require a
translation of a non-English language document to be filed if a
translation is within the possession, custody or control of an
individual designated in 1.56(c) because such person may not recall
that there is a translation somewhere in the records of the individual,
perhaps having been made for another application years earlier.
Reply: The requirement of the rule for a translation to be submitted
under limited conditions is not a change in practice. See prior
1.56(j) and 1.97(b). Since the requirement has caused little, if any,
problem in the past, the suggestion of the comment is not adopted.
Comment 73. One comment suggested that 1.98(c) should be revised to
make it clear that a reference that is essentially cumulative to another
reference need not be listed in an information disclosure statement.
Reply: The concept that cumulative information is not material is set
forth in 1.56(b). Section 1.98 does not deal with what information
must be submitted, but provides an exception for cumulative information
to the requirement for a copy to be submitted of each item of
information listed in an information disclosure statement.
Comment 74. One comment stated that a sentence in the preamble
discussion of proposed 1.98(c) was burdensome because it would
require submission of incomplete or inexact translations which may have
been made of an item of information. The sentence in question reads:
"But if the individual has the ability to translate the
non-English language into English and has done so for the purposes of
reviewing the information relative to the claimed invention, the
translation would be considered `readily available.'"
Another comment stated that proposed 1.98(c) should be modified to
require a translation if the non-English language document is to be
considered by the examiner since the attorney would want to prepare an
accurate translation of particularly relevant references. One comment
suggested that 1.98(c), or the preamble discussion, should make it
clear that an English- language translation of a foreign language
material reference need not be submitted where an individual merely
reads in the reference in its original language and translates it
mentally but does not prepare a written translation. Five other comments
requested clarification on this point.
Reply: The Office does not intend to require translations unless they
have been reduced to writing and are actually translations of what is
contained in the non-English language information. Applicants should
note, however, that most examiners do not have the ability to understand
information which is not in English and that the Office will not
routinely translate information submitted in a non-English language. The
examiner will consider the information insofar as it is understood on
its face, e.g., drawings, chemical formulas, English-language abstracts,
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but will not have the information translated unless it appears to be
necessary to do so. Applicants are required to aid the examiner by
complying with the requirements for a concise explanation in
1.98(a)(3) for information submitted in a non-English language.
Comment 75. One comment stated that 1.98(d) should be clarified to
state that a copy of an item of information listed in an information
disclosure statement need not be submitted if the reference was cited by
the Office or previously submitted to the Office in connection with a
prior application.
Reply: The suggestion in the comment is adopted. The language of
1.98(d) has been modified to state that a copy of an item of information
is not required if it was previously cited by the Office or previously
submitted to the Office in a prior application being relied on for an
earlier filing date under 35 U.S.C. 120.
Comment 76.One comment suggested that proposed 1.98(d) should be
revise d to not require the submission of a copy of the information
listed in an information disclosure statement if a copy of the
information has previously been submitted to the Office in a prior
application, whether or not the earlier application is being relied upon
for an earlier filing date under 35 U.S.C. 120.
Reply: The suggestion in the comment is not adopted. The exception to
the requirement for a copy of each item of information to be submitted
has been made with regard to prior applications which will normally be
available to, and considered by, the examiner. It would not be efficient
for the examiner to be required to seek out unrelated application files
to obtain a copy of an item of information when a copy could easily be
submitted by applicant.
Comment 77. One comment questioned what would be considered "timely"
under 1.291 so that information would be considered by the examiner
without payment of a fee, in contrast to proposed 1.97 which may
require a fee.
Reply: Section 1.291 has not been amended to redefine timeliness. The
comment seems to imply that the fee requirements of 1.97 can be
avoided through the use of a protest submitting information, but such a
course of action might raise questions regarding compliance with the
duty of candor and good faith required in dealings with the Office.
Comment 78. One comment stated that the Office should not drop the
acknowledgment of a protest having been filed under 1.291 in a
reissue application because the acknowledgment served as an indication
that the protest had been received in the examining group from the mail
room.
Reply: The suggestion in the comment is not adopted. Any perceived
benefit from retaining the acknowledgment is outweighed by the
administrative burden it causes. There is no good reason to treat the
filing of protests in reissue applications differently from the filing
of protests in original applications or from the filing of other papers
in the Office.
Comment 79. One comment questioned whether an application could be
withdrawn from issue pursuant to proposed 1.313(b)(5) without
admitting unpatentability.
Reply: There is no requirement that unpatentability must be admitted
before an application can be withdrawn from issue pursuant to
1.313(b)(5). The rule provides for applications to be withdrawn from
issue and abandoned for consideration of information in a continuing
application. This differs from a petition under 1.313(b)(3) based on
unpatentability of one or more claims.
Comment 80. One comment questioned whether, if an application is
withdrawn from issue pursuant to proposed 1.313(b)(5), an information
disclosure statement can be submitted in the continuing application
under 1.97(b) without a certification.
Reply: A continuing application is treated like any other application
with regard to the times set forth in 1.97(b). Thus, for example, an
information disclosure statement could be filed without a fee or
certification in a continuing application within three months of the
filing date of the continuing application.
Comment 81. One comment questioned whether an application withdrawn from
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issue pursuant to 1.313(b)(5) could have new art and amendments
considered in that application rather than in a continuing application.
The comment also questioned the handling of applications withdrawn from
issue pursuant to 1.313(b)(3).
Reply: The language of 1.313(b)(5) makes it clear that an application
withdrawn from issue thereunder is to be abandoned without further
prosecution. This differs from an application withdrawn from issue
pursuant to 1.313(b)(3) because applicant had admitted the
unpatentability of one or more claims.
Comment 82. One comment questioned whether the continuing application
mentioned in proposed 1.313(b)(5) could be a file wrapper continuing
application under 1.62 and how applicants can accomplish the
withdrawal from issue under proposed 1.313(b) late in the prosecution
of an application.
Reply: The continuing application mentioned in 1.313(b)(5) can be a
file wrapper continuing application under 1.62. Even though 1.62
requires a file wrapper continuing application to be filed before the
payment of the issue fee, the Office will consider the filing of a
petition to withdraw from issue under 1.313(b)(5) as sufficient
grounds to waive that requirement of 1.62. Late in the prosecution of
an application, the Office has difficulty in matching papers with the
application file. Papers requesting that an application be withdrawn
from issue after the issue fee is paid should be directed, or preferably
hand-carried, to the Office of Petitions in the Office of the Assistant
Commissioner for Patents.
Comment 83. Seven comments suggested that 1.555(a) should not be
amended to require the submission of "all information material to
patentability" since a reexamination proceeding is limited to
consideration of patents and printed publications.
Reply: The suggestion in the comments has been adopted. A paragraph (b),
which defines what information is material to patentability in a
reexamination proceeding, has been added to the rule.
Comment 84. One comment suggested that proposed 1.555(a) should be
modified to make clear that there is no duty of disclosure on employees
of a corporate patent owner if the employees are not substantively
involved in the preparation of the reexamination request or the
reexamination proceeding.
Reply: The suggestion in the comment to modify the language in
1.555(a) has not been adopted. The rule refers to individuals who are
substantively involved on behalf of the patent owner in a reexamination
proceeding.
Comment 85. Two comments stated that the Office should consider fraud or
other inequitable conduct issues in interference proceedings.
Reply: The suggestion in the comments has been adopted. The Office will
consider inequitable conduct issues in interference proceedings as
announced on November 19, 1991, in the Official Gazette of the Patent
and Trademark Office at 1132 Off. Gaz. Pat. Off. 33.
Comment 86. One comment requested more examples with regard to proposed
10.23(c)(10) of what alteration or combination of alterations in a
declaration would be considered material.
Reply: It is not the function of the rules or the rulemaking process to
provide a detailed listing of what alterations may be considered to be
improper. This consideration will necessarily be made in view of the
totality of the circumstances involved. Practitioners would be well
advised to avoid filing applications which contain alterations which
have not been initialed and dated.
Comment 87. Two comments stated that 10.23(c)(10) should be amended
to prohibit knowingly attempting to mislead the Office in the drafting
or prosecution of a patent application. One comment stated that
attempted fraud or inequitable conduct would not be prohibited by
proposed 10.23(c)(10) because such conduct would not be a violation of
proposed 1.56 or 1.555.
Reply: No amendment is necessary to the language of 10.23(c)(10). It
should be noted that the duty of candor and good faith in dealing with
the Office is included in 1.56 and 1.555. This duty includes a
prohibition against knowingly attempting to mislead the Office.
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Comment 88. Five comments stated that it would be unfair to impose the
new disclosure requirements and fees on applications that are pending
before the Office on the effective date of the new rule. Another comment
stated that the rules should be immediately effective for all pending
applications with some grace period for making the initial disclosure
without penalty and without fee.
Reply: The Office will apply the new rules to all applications pending
on, or filed on or after, the effective date of the rules. While this
implementation may cause some burden on some applicants, other
applicants will obtain benefits not otherwise available. This decision
will also ease the administrative burden on the Office in implementing
the new rules.
Other Considerations
The rule change is in conformity with the requirements of the Regulatory
Flexibility Act, 5 U.S.C. 601 et seq., Executive Orders 12291 and
12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
The General Counsel of the Department of Commerce has certified to
the Small Business Administration that the rule change will not have a
significant adverse economic impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)) because the rules
as adopted do not require individuals to submit information that they
are not already aware of and are not already under an obligation to
provide to the Office. The rules further promote the efficiency of the
examination process by encouraging a timely submission of an information
disclosure statement and by substantially eliminating rejections based
on inequitable conduct, thereby reducing the costs to all patent
applicants.
The Patent and Trademark Office has determined that this rule change
is not a major rule under Executive Order 12291. The annual effect on
the economy will be less than $100 million. There will be no major
increase in costs or prices for consumers, individual industries,
Federal, state or geographic regions. There will be no significant
adverse effects on competition, employment, investment, productivity or
innovation, or on the ability of the United States-based enterprises to
compete with foreign-based enterprises in domestic or export markets.
The Patent and Trademark Office has also determined that this rule
change has no Federalism implications affecting the relationship between
the National Government and the States as outlined in Executive Order
12612.
This rule contains a collection of information requirement subject to
the Paperwork Reduction Act, which has previously been approved by the
Office of Management and Budget under Control No. 0651-0011. Each
information disclosure statement is estimated to take approximately 30
minutes, including time for reviewing instructions, gathering and
maintaining data needed, and completing and reviewing the collection of
information. The time estimate has been reduced from that stated in the
proposal since the requirement for a concise explanation of the
relevance of each item of information cited in an information disclosure
statement has been limited to information submitted in a language other
than English. Send comments regarding this burden estimate Patent and
Trademark Office, Office of Management and Organization, and to the
Office of Information and Regulatory Affairs, Office of Management and
Budget, Washington, D.C. 20503. (Attention Paper Reduction Project
0651-0011)
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Inventions and patents, Reporting
and record keeping requirements, Small businesses.
37 CFR Part 10
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Administrative practice and procedure, Inventions and patents, Lawyers,
Reporting and record keeping requirements.
For the reasons set forth in the preamble, 37 CFR Parts 1 and 10 are
amended as follows:
Part 1 - Rules of Practice in Patent Cases
1. The authority citation for Part 1 continues to read as follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. In 1.17, paragraph(i)(1) is revised and paragraph (p) is added to
read as follows:
1.17 Patent application processing fees.
* * * * *
(i)(1) For filing a petition to the Commissioner under a section of this
part listed below which refers to this paragraph ................ 130.00
1.12--for access to an assignment record.
1.14--for access to an application.
1.53--to accord a filing date.
1.55--for entry of late priority papers.
1.60--to accord a filing date.
1.62--to accord a filing date.
1.97(d)--to consider an information disclosure statement.
1.103--to suspend action in application.
1.177--for divisional reissues to issue separately.
1.312--for amendment after payment of issue fee.
1.313--to withdraw an application from issue.
1.314--to defer issuance of a patent.
1.334--for patent to issue to assignee, assignment recorded late.
1.666(b)--for access to interference settlement agreement.
* * * * *
(p) For submission of an information disclosure statement under
1.97(c) ........................................................ $200.00
3. Section 1.28, paragraph (d)(2) is revised to read as follows:
1.28 Effect on fees of failure to establish status, or change status,
as a small entity.
* * * * *
(d)(1) * * *
(2) Improperly and with intent to deceive
(i) establishing status as a small entity,
or
(ii) paying fees as a small entity
shall be considered as a fraud practiced or attempted on the Office.
4. Section 1.51, paragraph (b) is revised to read as
follows:
1.51 General requisites of an application.
* * * * *
(b) Applicants are encouraged to file an information disclosure
statement. See 1.97 and 1.98.
5. Section 1.52, paragraph (c) is revised to read as follows:
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1.52 Language, paper, writing, margins.
* * * * *
(c) Any interlineation, erasure, cancellation or other alteration of the
application papers filed should be made before the signing of any
accompanying oath or declaration pursuant to 1.63 referring to those
application papers and should be dated and initialed or signed by the
applicant on the same sheet of paper. Application papers containing
alterations made after the signing of an oath or declaration referring
to those application papers must be supported by a supplemental oath or
declaration under 1.67(c). After the signing of the oath or
declaration referring to the application papers, amendments may be made
in the manner provided by 1.121 and 1.123 through 1.125.
* * * * *
6. Section 1.56 is revised to read as follows:
1.56 Duty to disclose information material to patentability.
(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
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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, 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.
7. Section 1.63, paragraphs (b)(3) and (d) are revised to read as
follows:
1.63 Oath or declaration.
* * * * *
(b) * * *
(3) Acknowledges the duty to disclose to the Office all
information known to the person to be material to patentability as
defined in 1.56.
(d) In any continuation-in-part application filed under the
conditions specified in 35 U.S.C. 120 which discloses and claims subject
matter in addition to that disclosed in the prior copending application,
the oath or declaration must also state that the person making the oath
or declaration acknowledges the duty to disclose to the Office all
information known to the person to be material to patentability as
defined in 1.56, 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.
8. Section 1.67 is amended by adding a new paragraph (c) to read as
follows:
1.67 Supplemental oath or declaration.
* * * * *
(c) A supplemental oath or declaration meeting the requirements of
1.63 must also be filed if the application was altered after the oath or
declaration was signed or if the oath or declaration was signed:
(1) in blank;
(2) without review thereof by the person making the oath or
declaration; or
(3) without review of the specification, including the claims, as
required by 1.63(b)(1).
9. Section 1.97 is revised to read as follows:
1.97 Filing of information disclosure statement.
(a) In order to have information considered by the Office during the
pendency of a patent application, an information disclosure statement in
compliance with 1.98 should be filed in accordance with this section.
(b) An information disclosure statement shall be considered by the
Office if filed:
(1) within three months of the filing date of a national
application;
(2) within three months of the date of entry of the national stage as
set forth in 1.491 in an international application; or
(3) before the mailing date of a first Office action on the merits,
whichever event occurs last.
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(c) An information disclosure statement shall be considered by
the Office if filed after the period specified in paragraph (b) of this
section, but before the mailing date of either
(1) a final action under 1.113 or
(2) a notice of allowance under 1.311,
whichever occurs first, provided the statement is accompanied by either
a certification as specified in paragraph (e) of this section or the fee
set forth in 1.17(p).
(d) An information disclosure statement shall be considered by
the Office if filed after the mailing date of either
(1) a final action under 1.113 or
(2) a notice of allowance under 1.311,
whichever occurs first, but before payment of the issue fee, provided
the statement is accompanied by:
(i) a certification as specified in paragraph (e) of this
section,
(ii) a petition requesting consideration of the information
disclosure statement, and
(iii) the petition fee set forth in 1.17(i)(1).
(e) A certification under this section must state either
(1) that each item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application not more than three months
prior to the filing of the statement, or
(2) that no item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application or, to the knowledge of the
person signing the certification after making reasonable inquiry, was
known to any individual designated in 1.56(c) more than three months
prior to the filing of the statement.
(f) No extensions of time for filing an information disclosure
statement are permitted under 1.136. If a bona fide attempt is made
to comply with 1.98, but part of the required content is
inadvertently omitted, additional time may be given to enable full
compliance.
(g) An information disclosure statement filed in accordance with this
section shall not be construed as a representation that a search has
been made.
(h) The filing of an information disclosure statement shall not be
construed to be an admission that the information cited in the statement
is, or is considered to be, material to patentability as defined in
1.56(b).
(i) Information disclosure statements, filed before the grant of a
patent, which do not comply with this section and 1.98 will be placed
in the file, but will not be considered by the Office.
10. Section 1.98 is revised to read as follows:
1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under 1.97 shall
include:
(1) A list of all patents, publications, or other information
submitted for consideration by the Office;
(2) A legible copy of:
(i) Each U.S. and foreign patent;
(ii) Each publication or that portion which caused it to be listed;
and
(iii) All other information or that portion which caused it to be
listed, except that no copy of a U.S. patent application need be
included; and
(3) A concise explanation of the relevance, as it is presently
understood by the individual designated in 1.56(c) most knowledgeable
about the content of the information, of each patent, publication, or
other information listed that is not in the English language. The
concise explanation may be either separate from the specification or
incorporated therein.
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(b) Each U.S. patent listed in an information disclosure
statement shall be identified by patentee, patent number and issue date.
Each foreign patent or published foreign patent application shall be
identified by the country or patent office which issued the patent or
published the application, an appropriate document number, and the
publication date indicated on the patent or published application. Each
publication shall be identified by author (if any), title, relevant
pages of the publication, date and place of publication.
(c) When the disclosures of two or more patents or publications
listed in an information disclosure statement are substantively
cumulative, a copy of one of the patents or publications may be
submitted without copies of the other patents or publications provided
that a statement is made that these other patents or publications are
cumulative. If a written English-language translation of a non-English
language document, or portion thereof, is within the possession, custody
or control of, or is readily available to any individual designated in
1.56(c), a copy of the translation shall accompany the statement.
(d) A copy of any patent, publication or other information listed in
an information disclosure statement is not required to be provided if it
was previously cited by or submitted to the Office in a prior
application, provided that the prior application is properly identified
in the statement and relied upon for an earlier filing date under 35
U.S.C. 120.
11. Section 1.99 is removed and reserved.
12. Section 1.175, paragraph (a)(7), is revised to read as follows:
1.175 Reissue oath or declaration.
(a) * * *
(7) Acknowledging the duty to disclose to the Office all
information known to applicants to be material to patentability as
defined in 1.56.
* * * * *
13. Section 1.193(c) is removed and reserved.
1.193 Examiner's Answer.
14. Section 1.291, paragraphs (a) and (c), are revised to read as
follows:
1.291 Protests by the public against pending applications.
(a) Protests by a member of the public against pending applications will
be referred to the examiner having charge of the subject matter
involved. A protest specifically identifying the application to which
the protest is directed will be entered in the application file if:
(1) the protest is timely submitted; and
(2) the protest is either served upon the applicant in accordance
with 1.248, or filed with the Office in duplicate in the event
service is not possible.
Protests raising fraud or other inequitable conduct issues will be
entered in the application file, generally without comment on those
issues. Protests which do not adequately identify a pending patent
application will be disposed of and will not be considered by the Office.
* * * * *
(c) A member of the public filing a protest in an application under
paragraph (a) of this section will not receive any communications from
the Office relating to the protest, other than the return of a
self-addressed postcard which the member of the public may include with
the protest in order to receive an acknowledgment by the Office that the
protest has been received. The Office may communicate with the applicant
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regarding any protest and may require the applicant to respond to
specific questions raised by the protest. In the absence of a request by
the Office, an applicant has no duty to, and need not, respond to a
protest. The limited involvement of the member of the public filing a
protest pursuant to paragraph (a) of this section ends with the filing
of the protest, and no further submission on behalf of the protestor
will be considered unless such submission raises new issues which could
not have been earlier presented.
15. Section 1.313, paragraph (b), is revised to read as follows:
1.313 Withdrawal from issue.
* * * * *
(b) When the issue fee has been paid, the application will not be
withdrawn from issue for any reason except:
(1) a mistake on the part of the Office;
(2) a violation of 1.56 or illegality in the application;
(3) unpatentability of one or more claims;
(4) for interference; or
(5) for abandonment to permit consideration of an information
disclosure statement under 1.97 in a continuing application.
16. Section 1.555 is revised to read as follows:
1.555 Information material to patentability in reexamination
proceedings.
(a) A patent by its very nature is affected with a public interest. The
public interest is best served, and the most effective reexamination
occurs when, at the time a reexamination proceeding is being conducted,
the Office is aware of and evaluates the teachings of all information
material to patentability in a reexamination proceeding. Each individual
associated with the patent owner in a reexamination proceeding 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 in a reexamination
proceeding. The individuals who have a duty to disclose to the Office
all information known to them to be material to patentability in a
reexamination proceeding are the patent owner, each attorney or agent
who represents the patent owner, and every other individual who is
substantively involved on behalf of the patent owner in a reexamination
proceeding. The duty to disclose the information exists with respect to
each claim pending in the reexamination proceeding until the claim is
cancelled. Information material to the patentability of a cancelled
claim need no be submitted if the information is not material to
patentability of any claim remaining under consideration in the
reexamination proceeding. The duty to disclose all information known to
be material to patentability in a reexamination proceeding is deemed to
be satisfied if all information known to be material to patentability of
any claim in the patent after issuance of the reexamination certificate
was cited by the Office or submitted to the Office in an information
disclosure statement. However, the duties of candor, good faith, and
disclosure have not been complied with if any fraud on the Office was
practiced or attempted or the duty of disclosure was violated through
bad faith or intentional misconduct by, or on behalf of, the patent
owner in the reexamination proceeding. Any information disclosure
statement must be filed with the items listed in 1.98 as applied to
individuals associated with the patent owner in a reexamination
proceeding, and should be filed within two months of the date of the
order for reexamination, or as soon thereafter as possible.
(b) Under this section, information is material to patentability in a
reexamination proceeding when it is not cumulative to information of
record or being made of record in the reexamination proceeding, and
(1) it is a patent or printed publication that establishes, by
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itself or in combination with other patents or printed publications, a
prima facie case of unpatentability of a claim; or
(2) it refutes, or is inconsistent with, a position the patent owner
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 of a claim pending in a
reexamination proceeding 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) The responsibility for compliance with this section rests upon
the individuals designated in paragraph (a) of this section and no
evaluation will be made by the Office in the reexamination proceeding as
to compliance with this section. If questions of compliance with this
section are discovered during a reexamination proceeding, they will be
noted as unresolved questions in accordance with 1.552(c).
Part 10 - Representation of Others Before the Patent and Trademark Office
17. The authority citation for Part 10 continues to read as follows:
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 41.
18. Section 10.23, paragraphs (c)(10) and (c)(11), are revised to read
as follows:
10.23 Misconduct.
* * * * *
(c) * * *
(10) Knowingly violating or causing to be violated the
requirements of 1.56 or 1.555 of this subchapter.
(11) Knowingly filing or causing to be filed an application
containing any material alteration made in the application papers after
the signing of the accompanying oath or declaration without identifying
the alteration at the time of filing the application papers.
Jan. 9, 1992 HARRY F. MANBECK, Jr.
Assistant Secretary and Commissioner
of Patents and Trademarks
[1135 OG 13]