37 CFR 1.56
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`This document is current through the January 27, 2020 issue of the Federal Register. Title 3 is current through
`December 31, 2019.
`
`Code of Federal Regulations > TITLE 37 -- PA TENTS, TRADEMARKS, AND COPYRIGHTS >
`CHAPTER I -- UNITED STATES PA TENT AND TRADEMARK OFFICE, DEPARTMENT OF
`COMMERCE > SUBCHAPTER A -- GENERAL > PART 1 -- RULES OF PRACTICE IN PA TENT
`CASES > SUBPART B -- NATIONAL PROCESSING PROVISIONS > PA TENTS > THE
`APPL/CATION
`
`§ 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`is cancelled or withdrawn from consideration, or the application becomes abandoned.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`the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the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
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`(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.
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`(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
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`(1)1t establishes, by itself or in combination with other information, a prima facie case of unpatentability
`of a claim; or
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`(2)1t refutes, or is inconsistent with, a position the applicant takes in:
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`(i)Opposing an argument of unpatentability relied on by the Office, or
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`(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 giv~n to evidence which may be submitted in an attempt to establish a
`contrary conclusion of patentability.
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`EXHIBIT
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`37 CFR 1.56
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`Page 2 of 2
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`(c)lndividuals associated with the filing or prosecution of a patent application within the meaning of this section
`are:
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`(1)Each inventor named in the application;
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`(2)Each attorney or agent who prepares or prosecutes the application; and
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`(3)Every other person who is substantively involved in the preparation or prosecution of the application
`and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an
`obligation to assign the application.
`
`(d)lndividuals other than the attorney, agent or inventor may comply with this section by disclosing information
`to the attorney, agent, or inventor.
`
`(e)ln any continuation-in-part application, the duty under this section includes the duty to disclose to the Office
`all information known to the person to be material to patentability, as defined in paragraph (b) of this section,
`which became available between the filing date of the prior application and the national or PCT international
`filing date of the continuation-in-part application.
`
`Statutory Authority
`
`AUTHORITY NOTE APPLICABLE TO ENTIRE PART:
`
`35 U.S.C. 2(b)(2), unless otherwise noted.
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`History
`
`[57 FR 2034, Jan. 17, 1992; 65 FR 54604. 54666. Sept. 8, 2000; 77 FR 48776, 48818. Aug. 14, 2012]
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`LEXISNEXIS' CODE OF FEDERAL REGULATIONS
`Copyright© 2020, by Matthew Bender & Company, a member of the LexisNexis Group. All rights re.served.
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`End of Document
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