MPEP 2001.01
Who Has Duty To Disclose

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2001.01    Who Has Duty To Disclose [R-08.2017]

37 C.F.R. 1.56 Duty to disclose information material to patentability.

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  • (c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
    • (1) Each inventor named in the application;
    • (2) Each attorney or agent who prepares or prosecutes the application; and
    • (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.

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37 C.F.R. 1.56 (pre-AIA) Duty to disclose information material to patentability.

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  • (c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
    • (1) Each inventor named in the application;
    • (2) Each attorney or agent who prepares or prosecutes the application; and
    • (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application

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Individuals having a duty of disclosure are limited to those who are "substantively involved in the preparation or prosecution of the application." This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application. In accordance with statutory changes required by the AIA, 37 CFR 1.56(c)(3) was modified to apply the duty of disclosure to those who are associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.

The duty of disclosure applies only to individuals, not to organizations. For instance, the duty of disclosure would not apply to a corporation or institution as such. However, it would apply to individuals within the corporation or institution who were substantively involved in the preparation or prosecution of the application, and actions by such individuals may affect the rights of the corporation or institution.