2014 Duty of Disclosure in Reexamination Proceedings and Supplemental Examination [R-08.2017]
37 C.F.R. 1.555 Information material to patentability in ex parte reexamination and inter partes 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 re examination proceeding. The individuals who have a duty to disclose to the Office all information known to them to be material to patentability in a re examination 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 re examination 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 the patentability of a cancelled claim need not 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(a) 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.
- (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 raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.552(c).
As provided in 37 CFR 1.555, the duty of disclosure in reexamination proceedings applies to the patent owner and individuals associated with the patent owner. That duty is a continuing obligation on the part of the patent owner throughout the proceedings. Any fraud practiced or attempted on the Office or any violation of the duty of disclosure through bad faith or intentional misconduct by any such individual results in noncompliance with 37 CFR 1.555(a). Any such issues raised by the patent owner or the third party requester during a reexamination proceeding will merely be noted as unresolved questions under 37 CFR 1.552(c). See MPEP § 2258 for information material to patentability in ex parte reexamination proceedings and MPEP § 2658 for inter partes reexamination proceedings.
For the patent owner’s duty to disclose prior or concurrent proceedings in which the patent is or was involved, see MPEP § 2282 (for ex parte reexamination), § 26.6 (for inter partes reexamination), and § 2001.06(c).
In supplemental examination, the duty of disclosure applies to the patent owner and individuals associated with the patent owner as defined in 37 CFR 1.555. However, as provided by 37 CFR 1.625(d)(4), information material to patentability is defined by 37 CFR 1.56 in supplemental examination and any ex parte reexamination proceeding ordered under 35 U.S.C. 257. Furthermore, 37 CFR 1.620(g) provides that, if the Office becomes aware, during the course of a supplemental examination or of any ex parte reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the Office may have been committed in connection with the patent requested to be examined, the supplemental examination proceeding or any ex parte reexamination proceeding ordered under 35 U.S.C. 257 will continue. The matter will be referred to the U.S. Attorney General in accordance with 35 U.S.C. 257(e).
For the patent owner’s duty to disclose prior or concurrent proceedings in which the patent is or was involved in supplemental examination, see MPEP § 2820.