Duty of Candor

Statutory Basis

• The duty is codified in 37 C.F.R. § 1.56
• It is grounded in the equitable principle that the patent applicant must deal fairly with the USPTO, which must rely on the applicant's representations because it cannot independently investigate all facts

Who has the Duty

• (a) each inventor named in the application
• (b) each attorney or agent who prepares or prosecutes the application
• (c) every other person who is substantively involved in the preparation or prosecution of the application AND who is associated with the inventor, the applicant, or the assignee
• 'substantively involved' includes people who: review the application, provide prior art, advise on claim scope, or participate in prosecution decisions

Who Does not Have the Duty

• People who merely provide financial or administrative support without substantive technical or legal input
• Third parties who provide prior art to the applicant without being substantively involved in prosecution

Material Information

• The duty requires disclosure of information that the individual KNOWS to be material
• There is no duty to search for material information

Information Disclosure Statements (IDS)

• The standard mechanism for fulfilling the duty of candor
• An IDS lists prior art and other material information for the examiner to consider.

Pre-therasense Standard

• The previous 'reasonable examiner' standard held that information was material if there was a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the claims
• This was a broader standard that the Federal Circuit found led to overcrowding of IDS disclosures

Examples of Material Information

• (1) a prior art reference that anticipates or renders obvious at least one claim
• (2) contradictory data known to the inventor that undermines a patentability argument made to the examiner
• (3) a prior art reference identified during a related litigation
• (4) a rejection of a related foreign application based on specific prior art
• (5) a claim construction by another court that contradicts the applicant's claim construction argument

Non-material Information

• Cumulative information (prior art already cited by the examiner)
• Information only tangentially related to the claims.

Form and Content

• USPTO Form PTO/SB/08 (patent) or PTO/SB/08a/08b (non-patent literature)
• The IDS lists: (a) US patent documents (number and issue date)
• (b) US patent application publications
• (c) foreign patent documents
• (d) non-patent literature (journal articles, conference papers, product manuals)

Copies Required

• Applicant must submit copies of each cited document UNLESS: (a) the reference is a US patent or US published application (USPTO has its own copies)
• (b) the reference was previously considered by the USPTO in a related application and applicant states where

Timeliness — When Ids is Free

• An IDS filed before the earlier of: (a) the mailing date of a first office action on the merits
• Or (b) three months after the application filing date
• No fee required

Timeliness — After First Office Action

• IDS filed after the first office action but before (a) the mailing of a notice of allowance OR (b) a statement that the claims have been allowed
• Requires a certification that each item was first cited or received after the filing of the first office action

Timeliness — After Notice of Allowance

• An IDS may still be filed after a notice of allowance, but ONLY with: (a) payment of additional fee ($200 large entity)
• AND (b) certification that the information was first learned less than 3 months before filing

Without Proper Certification/fee

• An IDS filed outside the timeliness windows without the required certification or fee is NOT considered by the USPTO
• The duty may not be satisfied.

(2) Deceptive Intent

• The person who made the disclosure decision did so with specific intent to deceive the USPTO
• Both elements must be proven by CLEAR AND CONVINCING evidence

Therasense Tightened Intent Standard

• The Federal Circuit in Therasense eliminated the 'sliding scale' where a low materiality could be offset by high intent and vice versa
• Both elements must independently meet their thresholds
• 'should have known' or gross negligence is insufficient — actual specific intent to deceive is required

Entire Patent Unenforceable

• Unlike invalidity (which can affect specific claims), inequitable conduct renders the ENTIRE PATENT unenforceable
• Even valid, non-obvious claims become unenforceable

Defense Strategy

• Defendants in patent infringement cases assert inequitable conduct as an equitable defense
• It requires a bench trial (not a jury)
• It is determined by the judge

Duty Satisfied by Ids

• Filing an IDS that fully discloses the material information, even if the examiner ultimately allows the claims, satisfies the duty
• The examiner's decision to allow after considering the information is the examiner's responsibility.

Related US Applications

• When a continuation, divisional, or CIP application is filed, applicants have a duty to disclose material information from the parent application that remains material
• Prior art cited in the parent is automatically considered
• However, NEW material prior art discovered after filing the parent must be disclosed in the continuation

Related Foreign Applications

• When a patent application is filed in foreign countries, the following may be material to the US application: (a) rejections by foreign patent offices based on specific prior art
• (b) claim amendments made in foreign applications to overcome rejections
• (c) search reports from foreign offices identifying prior art
• Applicants should monitor foreign prosecution and file IDS submissions citing material foreign office actions

Litigation-discovered Prior Art

• During litigation of related patents, parties may discover prior art that is material to pending applications in the same family
• This art should be submitted to the USPTO in a timely IDS for any pending related applications

Reexamination

• During ex parte reexamination initiated by the patent owner, the duty of candor continues
• The patent owner may not withhold material art from the reexamination proceeding