© 2002, Gallagher & Dawsey Co., LPA
Each person participating in the prosecution of a patent application
owes the United States Patent & Trademark Office (USPTO) a duty of
candor and good faith by law under 37 CFR §1.56. This means that
applicants are under a duty to disclose to the USPTO all information
that is material to the examination of the application. As such, under
37 CFR §1.97, an Information Disclosure Statement (IDS) must by filed
with the USPTO.
Patent attorneys are often asked what is considered to be "material"
to the examination of an application. Under 37 CFR §1.56(b)
information is material 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 in the pending
application; or (2) it refutes, or is inconsistent with, a position
the applicant takes in opposing an argument of unpatentability relied
on by the USPTO, or in asserting an argument of patentability. This
standard is based upon determinations of a reasonable USPTO Examiner.
Such material information is disclosed to the USPTO through the use of
an IDS. An IDS should ideally be provided to the USPTO at the time the
application is filed. However, an IDS may be filed within three months
after an application is filed or before the mailing date of the first
Office Action on the merits. An IDS may be filed later provided it is
submitted prior to a final office action along with a statement
meeting the requirements of 37 CFR §1.97(e) and the payment of a fee,
It is important to note that while this requirement requires the
disclosure of information known to those involved in the preparation
of the application, it does not require applicants to search for such
information. In other words, any information that you have or have
used must be disclosed, but you don't have to start a search for
favorable or unfavorable material related to your application.
Further, including materials in the IDS does not constitute an
admission that they are relevant to the patentability of the
application, so even adverse material may not necessarily be fatal.
Intentional failure to disclose all information relevant to the
examination of an application results in a subsequently issued patent
to be declared unenforceable for inequitable conduct. However, even
gross negligence will not be held to be an intentional failure to
The duty to disclose is a continuous duty and exists for each claim of
a pending application until it is cancelled or withdrawn from
consideration. Therefore, even after the filing of an IDS additional
material information must be submitted to the USPTO within three
months of its discovery.
As with most things in life, when applying for a patent honesty is the
best policy. Report all sources that you have used, even if they are
unfavorable to your application. The penalty for non-disclosure is far
more serious than dealing with adverse prior art, which may turn out
to be not as bad as you might have thought. As a practical matter,
keep copies of the materials you use while you are developing your
patent. It is very frustrating at application time to have to make a
backwards search for articles you know you have used, but can't seem
to find anymore.