Chapter   2000  Duty of Disclosure
---SECTION---2000 [No Text]

---SECTION---2000.01 Introduction

This Chapter deals with the duties owed toward the Patent and Trademark
Office by the inventor and every other individual who is substantively
involved in the preparation or prosecution of the application and who is
associated with the inventor or the inventor's assignee.  These duties,
of candor and good faith and disclosure, have been codified in  37 CFR
1.56, as promulgated pursuant to carrying out the duties of the
Commissioner under Sections 6, 131, and 132 of Title 35 of the United
States Code.

---SECTION---2001 Duty of Disclosure, Candor, and Good Faith

37 CFR 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cancelled or withdrawn from consideration, or the application becomes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cancelled or withdrawn from consideration need not be submitted if the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
Section Section  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

(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.

(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

(1) It establishes, by itself or in combination with other information,
a prima facie case of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a position the applicant takes
in:

(i) Opposing an argument of unpatentability relied on by the Office, or

(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 given to evidence which
may be submitted in an attempt to establish a contrary conclusion of
patentability.

(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.

(d) Individuals other than the attorney, agent or inventor may comply
with this section by disclosing information to the attorney, agent, or
inventor.

37 CFR 1.56 defines the duty to disclose information to the Office.

---SECTION---2001.01 Who Has Duty To Disclose

37 CFR 1.56 Duty to disclose information material to patentability.

                  +++    

(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.

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.

The word "with" appears before "the assignee" and "anyone to whom there
is an obligation to assign" to make clear that the duty 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.

---SECTION---2001.03 To Whom Duty of Disclosure Is Owed

37 CFR 1.56(a) states that the "duty of candor and good faith" is owed
"in dealing with the Office" and that all such individuals have a "duty
to disclose to the Office" material information.  This duty "in dealing
with" and "to" the Office extends, of course, to all dealings which such
individuals have with the Office, and is not limited to representations
to or dealings with the examiner. For example, the duty would extend to
proceedings before the Board of Patent Appeals and Interferences, the
Office of the Assistant Commissioner for Patents, etc.

---SECTION---2001.04 Information Under 37 CFR 1.56(a)

37 CFR 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
Section Section  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

(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.

                  +++    

The language of  37 CFR 1.56 (and  37 CFR 1.555) has been modified
effective March 16, 1992 to emphasize that there is a duty of candor and
good faith which is broader than the duty to disclose material
information. 37 CFR 1.56 further states that "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 strives to issue valid patents. The Office has both an
obligation not to unjustly issue patents and an obligation not to
unjustly deny patents. Innovation and technological advancement are best
served when an inventor is issued a patent with the scope of protection
that is deserved.  The rules as adopted serve to remind individuals
associated with the preparation and prosecution of patent applications
of their duty of candor and good faith in their dealings with the
Office, and will aid the Office in receiving, in a timely manner, the
information it needs to carry out effective and efficient examination of
patent applications.

The amendment to  37 CFR 1.56 was proposed to address criticism
concerning a perceived lack of certainty in the materiality standard.
The rule as promulgated will provide greater clarity and hopefully
minimize the burden of litigation on the question of inequitable conduct
before the Office, while providing the Office with the information
necessary for effective and efficient examination of patent
applications.  37 CFR 1.56 has been amended to present a clearer and
more objective definition of what information the Office considers
material to patentability. The rules do not define fraud or inequitable
conduct which have elements both of materiality and of intent.

The definition of materiality in  37 CFR 1.56 does not impose
substantial new burdens on applicants, but is intended to provide the
Office with the information it needs to make a proper and independent
determination on patentability. It is the patent examiner who should
make the determination after considering all the facts involved in the
particular case.

37 CFR 1.56 states that each individual associated with the filing and
prosecution of a patent application has a duty to disclose all
information known to that individual to be material to patentability as
defined in the section.  Thus, the duty applies to contemporaneously or
presently known information. The fact that information was known years
ago does not mean that it was recognized that the information is
material to the present application.

The term "information" as used in  37 CFR 1.56 means all of the kinds of
information required to be disclosed and includes any information which
is "material to patentability."  Materiality is defined in  37 CFR
1.56(b) and discussed herein at MPEP Section  2001.05. In addition to
prior art such as patents and publications,  37 CFR 1.56 includes, for
example, information on possible prior public uses, sales, offers to
sell, derived knowledge, prior invention by another, inventorship
conflicts, and the like.

The term "information" is intended to be all encompassing, similar to
the scope of the term as discussed with respect to  37 CFR 1.291(a) (see
MPEP Section  1901.02).  37 CFR 1.56(a) also states: "The Office
encourages applicants to carefully examine: (1) prior art cited in
search reports of a foreign patent office in a counterpart application,
and (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." The sentence does not
create any new duty for applicants, but is placed in the text of the
rule as helpful guidance to individuals who file and prosecute patent
applications.

It should be noted that the rules are not intended to require
information favorable to patentability such as, for example, evidence of
commercial success of the invention. Similarly, the rules are not
intended to require, for example, disclosure of information concerning
the level of skill in the art for purposes of determining obviousness.

37 CFR 1.56(a) states that the duty to disclose information exists until
the application becomes abandoned. The duty to disclose information,
however, does not end when an application becomes allowed but extends
until a patent is granted on that application.  The rules provide for
information being considered after a notice of allowance is mailed and
before the issue fee is paid (37 CFR 1.97(d)) and for an application to
be withdrawn from issue because one or more claims are unpatentable (37
CFR 1.313(b)(3)) or for an application to be withdrawn from issue and
abandoned so that information may be considered in a continuing
application before a patent issues (37 CFR 1.313(b)(5)).

37 CFR 1.56 provides that the duty of disclosure can be met by
submitting information to the Office in the manner prescribed by  37 CFR
1.97 and 1.98.  37 CFR 1.97 and 1.98 have been amended effective March
16, 1992 so that information will be submitted to the Office in the
manner and at the time which will facilitate consideration by the
examiner.  Applicants are provided certainty as to when information will
be considered, and applicants will be informed when information is not
considered. The Office does not believe that courts should, or will,
find violations of the duty of disclosure because of unintentional
noncompliance with  37 CFR 1.97 and 1.98. If the noncompliance is
intentional, however, the applicant will have assumed the risk that the
failure to submit the information in a manner that will result in its
being considered by the examiner may be held to be a violation.

The Office does not anticipate any significant change in the quantity of
information cited to the Office. Presumably, applicants will continue to
submit information for consideration by the Office in applications
rather than making and relying on their own determinations of
materiality. An incentive remains to submit the information to the
Office because it will result in a strengthened patent and will avoid
later questions of materiality and intent to deceive. In addition, the
new rules will actually facilitate the filing of information since the
burden of submitting information to the Office has been reduced by
eliminating, in most cases, the requirement for a concise statement of
the relevance of each item of information listed in an information
disclosure statement. It should also be noted that  37 CFR 1.97(h)
states that the filing of an information disclosure statement shall not
be considered to be an admission that the information cited in the
statement is, or is considered to be, material to patentability as
defined in  37 CFR 1.56.

---SECTION---2001.05 Materiality Under 37 CFR 1.56(b)

37 CFR 1.56 Duty to disclose information material to patent ability.

                  +++    

(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

(1) It establishes, by itself or in combination with other information,
a prima facie case of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a position the applicant takes
in:

(i) Opposing an argument of unpatentability relied on by the Office, or

(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 given to evidence which
may be submitted in an attempt to establish a contrary conclusion of
patentability.

                  +++    

Under the rule, information is not material unless it comes within the
definition of  37 CFR 1.56(b)(1) or (2).  If information is not
material, there is no duty to disclose the information to the Office. 
Thus, it is theoretically possible for applicants to draft claims and a
specification to avoid a prima facie case of obviousness over a
reference and then to be able to withhold the reference from the
examiner. The Office believes that most applicants will wish to submit
the information, however, even though they may not be required to do so,
to strengthen the patent and avoid the risks of an incorrect judgment on
their part on materiality or that it may be held that there was an
intent to deceive the Office.

---SECTION---2001.06 Sources of Information

All individuals covered by  37 CFR 1.56 (reproduced in MPEP Section 
2001.01) have a duty to disclose to the Patent and Trademark Office all
material information they are aware of regardless of the source of or
how they become aware of the information. Materiality controls whether
information must be disclosed to the Office, not the circumstances under
which or the source from which the information is obtained.  If
material, the information must be disclosed to the Office. The duty to
disclose material information extends to information such individuals
are aware of prior to or at the time of filing the application or become
aware of during the prosecution thereof.

Such individuals may be or become aware of material information from
various sources such as, for example, co-workers, trade shows,
communications from or with competitors, potential infringers, or other
third parties, related foreign applications (see MPEP Section 
2001.06(a)), prior or copending United States patent applications (see
MPEP Section  2001.06(b)), related litigation (see MPEP Section 
2001.06(c)) and preliminary examination searches.

---SECTION---2001.06(a) Prior Art Cited in Related Foreign Applications

Applicants and other individuals, as set forth in  37 CFR 1.56, have a
duty to bring to the attention of the Office any material prior art or
other information cited or brought to their attention in any related
foreign application. The inference that such prior art or other
information is material is especially strong where it is the only prior
art cited or where it has been used in rejecting the same or similar
claims in the foreign application.  See Gemveto Jewelry Co. v. Lambert
Bros., Inc., 542 F. Supp. 933, 216 USPQ 976 (S.D. N.Y. 1982) wherein a
patent was held invalid or unenforceable because patentee's foreign
counsel did not disclose to patentee's United States counsel or to the
Office prior art cited by the Dutch Patent Office in connection with the
patentee's corresponding Dutch application. The court stated, 542 F.
Supp. at 943, 216 USPQ at 985:

Foreign patent attorneys representing applicants for U.S. patents
through local correspondent firms surely must be held to the same
standards of conduct which apply to their American counterparts; a
double standard of accountability would allow foreign attorneys and
their clients to escape responsibility for fraud or inequitable conduct
merely by withholding from the local correspondent information
unfavorable to patentability and claiming ignorance of United States
disclosure requirements.

---SECTION---2001.06(b) Information Relating to or From Copending United
States Patent Applications

The individuals covered by  37 CFR 1.56 have a duty to bring to the
attention of the examiner, or other Office official involved with the
examination of a particular application, information within their
knowledge as to other copending United States applications which are
"material to patentability" of the application in question. As set forth
by the court in Armour & Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ
70, 79 (7th Cir. 1972):

[W]e think that it is unfair to the busy examiner, no matter how
diligent and well informed he may be, to assume that he retains details
of every pending file in his mind when he is reviewing a particular
application . . . [T]he applicant has the burden of presenting the
examiner with a complete and accurate record to support the allowance of
letters patent.

See also MPEP Section  2004, paragraph 9.

Accordingly, the individuals covered by  37 CFR 1.56 cannot assume that
the examiner of a particular application is necessarily aware of other
applications "material to patentability" of the application in question,
but must instead bring such other applications to the attention of the
examiner. For example, if a particular inventor has different
applications pending in which similar subject matter but patentably
indistinct claims are present that fact must be disclosed to the
examiner of each of the involved applications. Similarly, the prior art
references from one application must be made of record in another
subsequent application if such prior art references are "material to
patentability" of the subsequent application.

Normally, if the application under examination is identified as a
continuation or continuation-in-part of an earlier application, the
examiner will consider the prior art cited in the earlier application.
The examiner must indicate in the first Office action whether the prior
art in a related earlier application has been reviewed.  Accordingly, no
separate citation of the same prior art need be made in the later
application.

---SECTION---2001.06(c) Information From Related Litigation

Where the subject matter for which a patent is being sought is or has
been involved in litigation, the existence of such litigation and any
other material information arising therefrom must be brought to the
attention of the Patent and Trademark Office.  Examples of such material
information include evidence of possible prior public use or sales,
questions of inventorship, prior art, allegations of "fraud,"
"inequitable conduct," and "violation of duty of disclosure." Another
example of such material information is any assertion that is made
during litigation which is contradictory to assertions made to the
examiner. Environ Prods., Inc. v. Total Containment, Inc., 43 USPQ2d
1288, 1291 (E.D. Pa. 1997).  Such information might arise during
litigation in, for example, pleadings, admissions, discovery including
interrogatories, depositions, and other documents and testimony.

Where a patent for which reissue is being sought is, or has been,
involved in litigation which raised a question material to examination
of the reissue application, such as the validity of the patent, or any
allegation of "fraud," "inequitable conduct," or "violation of duty of
disclosure," the existence of such litigation must be brought to the
attention of the Office by the applicant at the time of, or shortly
after, filing the application, either in the reissue oath or
declaration, or in a separate paper, preferably accompanying the
application, as filed. Litigation begun after filing of the reissue
application should be promptly brought to the attention of the Office. 
The details and documents from the litigation, insofar as they are 
"material to patentability" of the reissue application as defined in  37
CFR 1.56, should accompany the application as filed, or be submitted as
promptly thereafter as possible.  See Critikon, Inc. v. Becton Dickinson
Vascular Access, Inc., 120 F.3d 1253, 1258, 1259, 43 USPQ2d 1666,
1670-71 (Fed. Cir. 1997) (patent held unenforceable due to inequitable
conduct based on patentee's failure to disclose a relevant reference and
for failing to disclose ongoing litigation).

For example, the defenses raised against validity of the patent, or
charges of "fraud" or "inequitable conduct"  in the litigation, would
normally be "material to the examination" of the reissue application. It
would, in most situations, be appropriate to bring such defenses to the
attention of the Office by filing in the reissue application a copy of
the court papers raising such defenses.  As a minimum, the applicant
should call the attention of the Office to the litigation, the existence
and the nature of any allegations relating to validity and/or "fraud,"
or "inequitable conduct" relating to the original patent, and the nature
of litigation materials relating to these issues.  Enough information
should be submitted to clearly inform the Office of the nature of these
issues so that the Office can intelligently evaluate the need for asking
for further materials in the litigation.  See MPEP Section  1442.04.

---SECTION---2001.06(d) Information Relating to Claims Copied From a
Patent

Where claims are copied or substantially copied from a patent,  37 CFR
1.607(c) requires applicant shall, at the time he or she presents the
claim(s), identify the patent and the numbers of the patent claims.
Failure to comply with  37 CFR 1.607(c) may result in the issuance of a
requirement for information as to why an identification of the source of
the copied claims was not made.  Clearly, the information required by 
37 CFR 1.607(c) as to the source of copied claims is material
information under  37 CFR 1.56 and failure to inform the PTO of such
information may violate the duty of disclosure.

---SECTION---2002 Disclosure - By Whom and How Made

37 CFR 1.56 Duty to disclose information material to patentability.

                  +++    

(d) Individuals other than the attorney, agent or inventor may comply
with this section by disclosing information to the attorney, agent, or
inventor.

---SECTION---2002.01 By Whom Made

37 CFR 1.56(d) makes clear that information may be disclosed to the
Office through an attorney or agent of record or through a pro se
inventor, and that other individuals may satisfy their duty of
disclosure to the Office by disclosing information to such an attorney,
agent, or inventor who then is responsible for disclosing the same to
the Office. Information that is not material need not be passed along to
the Office.

---SECTION---2002.02 Must be in Writing

It is clear that the disclosures under  37 CFR 1.56 must be in writing
as prescribed by  37 CFR 1.2 which requires:

All business with the Patent and Trademark Office should be transacted
in writing.  ***The action of the . . . Office will be based exclusively
on the written record in the Office.

Further, as provided in  37 CFR 1.4(b):

Since each application file should be complete in itself, a separate
copy of every paper to be filed in an application should be furnished
for each application to which the paper pertains, even though the
contents of the papers filed in two or more applications may be
identical.

---SECTION---2003 Disclosure  __ When Made

In reissue applications, applicants are encouraged to file information
disclosure statements at the time of filing or within 2 months of
filing, since reissue applications are taken up "special" (see MPEP
Section  1442 and Section  1442.03).  However, in a reissue where waiver
of the normal 2 month delay period of  37 CFR 1.176 is being requested
(see MPEP Section  1441), the statement should be filed at the time of
filing the application, or as soon thereafter as possible.

The presumption of validity is generally strong when prior art was
before and considered by the Office and weak when it was not.  See
Bolkcom v. Carborundum Co., 523 F.2d 492, 498, 186 USPQ 466, 471 (6th
Cir. 1975).

---SECTION---2003.01 Disclosure After Patent Is Granted

BY CITATIONS OF PRIOR ART UNDER 37 CFR 1.501

Where a patentee or any member of the public (including private persons,
corporate entities, and government agencies) has prior patents or
printed publications which the patentee or member of the public desires
to have made of record in the patent file, patentee or such member of
the public may file a citation of such prior art with the Patent and
Trademark Office pursuant to  37 CFR 1.501. Such citations and papers
will be entered without comment by the Office. The Office does not of
course consider the citation and papers but merely places them of record
in the patent file. Information which may be filed under  37 CFR 1.501
is limited to prior art patents and printed publications. Any citations
which include items other than patents and printed publications will not
be entered in the patent file. See MPEP Section  2202 through Section 
2208.

  BY REEXAMINATION

Where any person, including patentee, has prior art patents and/or
printed publications which said person desires to have the Patent and
Trademark Office consider after a patent has issued, such person may
file a Request for Reexamination of the patent (see  37 CFR 1.510 and
MPEP Section  2209 through Section  2220).

---SECTION---2004 Aids to Compliance With Duty of Disclosure

While it is not appropriate to attempt to set forth procedures by which
attorneys, agents, and other individuals may ensure compliance with the
duty of disclosure, the items listed below are offered as examples of
possible procedures which could help avoid problems with the duty of
disclosure. Though compliance with these procedures may not be required,
they are presented as helpful suggestions for avoiding duty of
disclosure problems.

1. Many attorneys, both corporate and private, are using letters and
questionnaires for applicants and others involved with the filing and
prosecution of the application and checklists for themselves and
applicants to ensure compliance with the duty of disclosure.  The letter
generally explains the duty of disclosure and what it means to the
inventor and assignee. The questionnaire asks the inventor and assignee
questions about

__ the origin of the invention and its point of departure from what was
previously known and in the prior art,

__ possible public uses and sales,

__ prior publication, knowledge, patents, foreign patents, etc.

The checklist is used by the attorney to ensure that the applicant has
been informed of the duty of disclosure and that the attorney has
inquired of and cited material prior art.

The use of these types of aids would appear to be most helpful, though
not required, in identifying prior art and may well help the attorney
and the client avoid or more easily explain a potentially embarrassing
and harmful "fraud" allegation.

2. It is desirable to ask questions about inventorship.  Who is the
proper inventor?  Are there disputes or possible disputes about
inventorship?  If there are questions, call them to the attention of the
Patent and Trademark Office.

3. It is desirable to ask questions of the inventor about the disclosure
of the best mode.  Make sure that the best mode is described.  The
disclosure of the best mode may be raised in litigation.  See, for
example, Carlson, The Best Mode Disclosure Requirement in Patent
Practice, 60 J. Pat. Off. Soc'y 171 (1978).

4. It is desirable for an attorney or agent to make certain that the
inventor, especially a foreign inventor, recognizes his or her
responsibilities in signing the oath or declaration.  See  37 CFR
1.69(a).

37 CFR 1.69 Foreign language oaths and declarations.

(a) Whenever an individual making an oath or declaration cannot
understand English, the oath or declaration must be in a language that
such individual can understand and shall state that such individual
understands the content of any documents to which the oath or
declaration relates.

                  +++    

Note MPEP Section  602.06 for a more detailed discussion.

5. It is desirable for an attorney or agent to carefully evaluate and
explain to the applicant and others involved the scope of the claims,
particularly the broadest claims.  Ask specific questions about possible
prior art which might be material in reference to the broadest claim or
claims. There is some tendency to mistakenly evaluate prior art in the
light of the gist of what is regarded as the invention or narrower
interpretations of the claims, rather than measuring the art against the
broadest claim with all of its reasonable interpretations.  It is
desirable to pick out the broadest claim or claims and measure the
materiality of prior art against a reasonably broad interpretation of
these claims.

6. It may be useful to evaluate the materiality of prior art or other
information from the viewpoint of whether it is the closest prior art or
other information. This will tend to put the prior art or other
information in better perspective. However,  37 CFR 1.56 may still
require the submission of prior art or other information which is not as
close as that of record.

7. Care should be taken to see that prior art or other information cited
in a specification or in an information disclosure statement is properly
described and that the information is not incorrectly or incompletely
characterized.  It is particularly important for an attorney or agent to
review, before filing, an application which was prepared by someone
else, e.g., a foreign application.  It is also important that an
attorney or agent make sure that foreign clients, including foreign
applicants, attorneys, and agents understand the requirements of the
duty of disclosure, and that the U.S. attorney or agent review any
information disclosure statements or citations to ensure that compliance
with  37 CFR 1.56 is present.  See Gemveto Jewelry Co. v. Lambert Bros.,
Inc., 542 F. Supp. 933, 216 USPQ 976 (S.D.N.Y. 1982) wherein a patent
was held invalid or unenforceable because patentee's foreign counsel did
not disclose to patentee's United States counsel or to the Office prior
art cited by the Dutch Patent Office in connection with the patentee's
corresponding Dutch application. The court stated, 542 F. Supp. at 943,
216 USPQ at 985:

Foreign patent attorneys representing applicants for U.S. patents
through local correspondent firms surely must be held to the same
standards of conduct which apply to their American counterparts; a
double standard of accountability would allow foreign attorneys and
their clients to escape responsibility for fraud or inequitable conduct
merely by withholding from the local correspondent information
unfavorable to patentability and claiming ignorance of United States
disclosure requirements.

8. Care should be taken to see that inaccurate statements or inaccurate
experiments are not intro duced into the specification, either
inadvertently or intentionally. For example, stating that an experiment
"was run" or "was conducted" when in fact the experiment was not run or
conducted is a misrepresentation of the facts. No results should be
represented as actual results unless they have actually been achieved.
Paper examples should not be described using the past tense. See MPEP
Section  608.01(p) and Section  707.07(l). Also, misrepresentations can
occur when experiments which were run or conducted are inaccurately
reported in the specification, e.g., an experiment is changed by leaving
out one or more ingredients. See Steierman v. Connelly, 192 USPQ 433
(Bd. Pat. Int. 1975); 192 USPQ 446 (Bd. Pat. Int. 1976).

9. Do not rely on the examiner of a particular application to be aware
of other applications belonging to the same applicant or assignee.  It
is desirable to call such applications to the attention of the examiner
even if there is only a question that they might be "material to
patentability" of the application the examiner is considering.  It is
desirable to be particularly careful that prior art or other information
in one application is cited to the examiner in other applications to
which it would be material.  Do not assume that an examiner will
necessarily remember, when examining a particular application, other
applications which the examiner is examining, or has examined.  See
Armour & Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ 70, 79 (7th
Cir. 1972); KangaROOS U.S.A., Inc. v. Caldor, Inc., 585 F. Supp. 1516,
1522, 1528-29, 222 USPQ 703, 708, 713-14 (S.D. N.Y. 1984), vacated and
remanded, 778 F.2d 1571, 228 USPQ 32 (Fed. Cir. 1985).

While vacating the summary judgment and remanding for trial in
KangaROOS, the Court of Appeals for the Federal Circuit stated that a
"lapse on the part of the examiner does not excuse the applicant."  778
F.2d at 1576, 228 USPQ at 35.

10. When in doubt, it is desirable and safest to submit information. 
Even though the attorney, agent, or applicant doesn't consider it
necessarily material, someone else may see it differently and
embarrassing questions can be avoided. The court in U.S. Industries v.
Norton Co., 210 USPQ 94, 107 (N.D. N.Y. 1980) stated "In short, the
question of relevancy in close cases, should be left to the examiner and
not the applicant." See also LaBounty Mfg., Inc. v. U.S. Int'l Trade
Comm'n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992).

11. It may be desirable to submit information about prior uses and sales
even if it appears that they may have been experimental, not involve the
specifically claimed invention, or not encompass a completed invention.
See Hycor Corp. v. The Schlueter Co., 740 F.2d 1529, 1534-37, 222 USPQ
553, 557-559 (Fed. Cir. 1984).  See also LaBounty Mfg., Inc. v. U.S.
Int'l Trade Comm'n, 958 F.2d 1066, 22 USPQ2d 1025 (Fed. Cir. 1992). 

12. Submit information promptly. An applicant, attorney, or agent who is
aware of prior art or other information and its significance should
submit same early in prosecution, e.g., before the first action by the
examiner, and not wait until after allowance. Potentially material
information discovered late in the prosecution should be immediately
submitted. That the issue fee has been paid is no reason or excuse for
failing to submit information. See Elmwood Liquid Products, Inc. v.
Singleton Packing Corp., 328 F. Supp. 974, 170 USPQ 398 (M.D. Fla.
1971).

13. It is desirable to avoid the submission of long lists of documents
if it can be avoided.  Eliminate clearly irrelevant and marginally
pertinent cumulative information. If a long list is submitted, highlight
those documents which have been specifically brought to applicant's
attention and/or are known to be of most significance.  See Penn Yan
Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260
(S.D. Fla. 1972), aff'd, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973),
cert. denied, 414 U.S. 874 (1974).  But cf. Molins PLC v. Textron Inc.,
48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).

14. Watch out for continuation-in-part applications where intervening
material information or documents may exist; particularly watch out for
foreign patents and publications related to the parent application and
dated more than 1 year before the filing date of the CIP.  These and
other intervening documents may be material information.  See In re
Ruscetta, 255 F.2d 687, 690-91, 118 USPQ 101, 104 (CCPA 1958); In re van
Lagenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972); Chromalloy American
Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295 (D. Del.
1972).

15. Watch out for information that might be deemed to be prior art under 
35 U.S.C. 102(f) and (g).

Prior art under  35 U.S.C. 102(f) may be available under  35 U.S.C. 103. 
See OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1401, 43
USPQ2d 1641, 1644 (Fed. Cir. 1997)(35 U.S.C. "102(f) is a prior art
provision for purposes of Section  103"); Dale Electronics v. R.C.L.
Electronics, 488 F.2d 382, 386, 180 USPQ 225, 227 (1st. Cir. 1973); and
Ex parte Andresen, 212 USPQ 100, 102 (Bd. App. 1981).

Note also that evidence of prior invention under  35 U.S.C. 102(g)  may
be available under  35 U.S.C. 103, such as in In re Bass, 474 F.2d 1276,
177 USPQ 178 (CCPA 1973).

Note  35 U.S.C. 103(c) disqualifies  35 U.S.C. 102(f)/103 or 102(g)/103
prior art which was, at the time the second invention was made, owned by
or subject to an obligation of assignment to, the person who owned the
first invention.  See 1050 O.G. 316.

16. Watch out for information picked up by the inventors and others at
conventions, plant visits, in-house reviews, etc.  See, for example,
Dale Electronics v. R.C.L. Electronics, 488 F.2d 382, 386-87, 180 USPQ
225, 228 (1st Cir. 1973).

17. Make sure that all of the individuals who are subject to the duty of
disclosure, such as spelled out in  37 CFR 1.56, are informed of and
fulfill their duty.

18. Finally, if information was specifically considered and discarded as
not material, this fact might be recorded in an attorney's file or
applicant's file, including the reason for discarding it. If judgment
might have been bad or something might have been overlooked
inadvertently, a note made at the time of evaluation might be an
invaluable aid in explaining that the mistake was honest and excusable.
Though such records are not required, they could be helpful in recalling
and explaining actions in the event of a question of "fraud" or 
"inequitable conduct" raised at a later time.

---SECTION---2010 Office Handling of Duty of Disclosure/Inequitable
Conduct Issues

Determination of inequitable conduct issues requires an evaluation of
the intent of the party involved.  While some court decisions have held
that intent may be inferred in some circumstances, consideration of the
good faith of the party, or lack thereof, is often required.  In several
court decisions, a high level of proof of intent to mislead the Office
was required in order to prove inequitable conduct under  37 CFR 1.56.
See In re Harito, 847 F.2d 801, 6 USPQ2d 1930 (Fed. Cir. 1988) and FMC
Corp. v. Manitowoc Co., 835 F.2d 1411, 5 USPQ2d 1112 (Fed. Cir. 1987). 
The Office is not the best forum in which to determine whether there was
an "intent to mislead''; such intent is best determined when the trier
of facts can observe demeanor of witnesses subjected to
cross-examination. A court, with subpoena power, is presently the best
forum to consider duty of disclosure issues under the present
evidentiary standard for finding an "intent to mislead."  The court
proceeding involves two participating adverse parties.  This is not the
case in the Office, since even "protesting'' parties are not permitted
to participate under the rules. Also, it is the courts and not the
Office that are in the best position to fashion an equitable remedy to
fit the precise facts in those cases where inequitable conduct is
established.  Furthermore, inequitable conduct is not set by statute as
a criteria for patentability but rather is a judicial application of the
doctrine of unclean hands which is appropriate to be handled by the
courts rather than by an administrative body. Because of the lack of
tools in the Office to deal with this issue and because of its sensitive
nature and potential impact on a patent, Office determinations generally
will not deter subsequent litigation of the same issue in the courts on
appeal or in separate litigation. Office determinations would
significantly add to the expense and time involved in obtaining a patent
with little or no benefit to the patent owner or any other parties with
an interest.

Accordingly, the Office does not investigate and reject original or
reissue applications under  37 CFR 1.56.  Likewise, the Office will not
comment upon duty of disclosure issues which are brought to the
attention of the Office in original or reissue applications except to
note in the application, in appropriate circumstances, that such issues
are no longer considered by the Office during its examination of patent
applications. Examination of lack of deceptive intent in reissue
applications will continue but without any investigation of inequitable
conduct issues. Applicant's statement of lack of deceptive intent
normally will be accepted as dispositive except in special circumstances
such as an admission or judicial determination of fraud or inequitable
conduct. See MPEP Section  2022.05.

---SECTION---2012 Reissue Applications Involving Issues of Fraud,
Inequitable Conduct, and/or Violation of Duty of Disclosure

Questions of  "fraud," "inequitable conduct," or violation of "duty of
disclosure" or  "candor and good faith" can arise in reissue
applications.

REQUIREMENT FOR "ERROR WITHOUT ANY DECEPTIVE INTENTION"

Both  35 U.S.C. 251 and  37 CFR 1.175 promulgated pursuant thereto
require that the error must have arisen "without any deceptive
intention." In re Heany, 1911 C.D. 138, 180 (1911), unequivocally
states:

Where such a condition [fraudulent or deceptive intention] is shown to
exist the right to reissue the patent is forfeited.

Similarly, the court in In re Clark, 522 F.2d 623, 627, 187 USPQ 209,
213 (CCPA 1975) indicated:

Reissue is not available to rescue a patentee who had presented claims
limited to avoid particular prior art and then had failed to disclose
that prior art . . . after that failure to disclose has resulted in
invalidating of the claims.

It is clear that "fraud" cannot be purged through the reissue process. 
See conclusions of Law 89 and 91 in Intermountain Research and Eng'g Co.
v. Hercules Inc., 171 USPQ 577, 631-32 (C.D. Cal. 1971).

Clearly, where several patents or applications stem from an original
application which contained fraudulent claims ultimately allowed, the
doctrine of unclean hands bars allowance or enforcement of any of the
claims of any of the applications or patents.  See Keystone Driller Co.
v. General Excavator Co., 290 U.S. 240, 245, 19 USPQ 228, 230 (1933);
East Chicago Machine Tool Corp. v. Stone Container Corp., 181 USPQ 744,
748 (N.D. Ill.), modified, 185 USPQ 210 (N.D. Ill. 1974). See also
Chromalloy American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173
USPQ 295 (D.Del. 1972) and Strong v. General Electric Co., 305 F. Supp.
1084, 162 USPQ 141 (N.D. Ga. 1969), aff'd, 434 F.2d 1042, 168 USPQ 8
(5th Cir. 1970), cert. denied, 403 U.S. 906 (1971) where fraud or
inequitable conduct affecting only certain claims or only one of related
patents was held to affect the other claims or patent.  Clearly, "fraud"
practiced or attempted in an application which issues as a patent is
"fraud" practiced or attempted in connection with any subsequent
application to reissue that patent.  The reissue application and the
patent are inseparable as far as questions of  "fraud,"  "inequitable
conduct," or "violation of the duty of disclosure" are concerned.  See
In re Heany, supra; and   Norton v. Curtiss, 433 F.2d 779, 792, 167 USPQ
532, 543 (CCPA 1970), wherein the court stated:

We take this to indicate that any conduct which will prevent the
enforcement of a patent after the patent issues should, if discovered
earlier, prevent the issuance of the patent.

Clearly, if a reissue patent would not be enforceable after its issue
because of "fraud," "inequitable conduct" or "violation of the duty of
disclosure" during the prosecution of the patent sought to be reissued,
the reissue patent application should not issue. Under such
circumstances, an appropriate remedy would be to reject the claims in
the application in accordance with  35 U.S.C. 251.  See MPEP Section 
1448.

The examiner is not to make any investigation as to the lack of
deceptive intent requirement in reissue applications. Applicant's
statement (in the oath or declaration) of lack of deceptive intent will
be accepted as dispositive except in special circumstances such as an
admission or judicial determination of fraud, inequitable conduct or
violation of the duty of disclosure, where no investigation need be made
and the fact of the admission or judicial determination exists per se.
Also, any admission of fraud, inequitable conduct or violation of the
duty of disclosure must be explicit, unequivocal, and not subject to
other interpretation. Where a rejection is made based upon such an
admission (see MPEP Section  1448) and applicant responds with any
reasonable interpretation of the facts that would not lead to a
conclusion of fraud, inequitable conduct or violation of the duty of
disclosure, the rejection should be withdrawn. Alternatively, if
applicant shows that the admission noted by the examiner was not in fact
an admission, the rejection should also be withdrawn.

---SECTION---2012.01 Collateral Estoppel

The Supreme Court in Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,
402 U.S. 313, 169 USPQ 513 (1971) set forth the rule that once a patent
has been declared invalid via judicial inquiry, a collateral estoppel
barrier is created against further litigation involving the patent,
unless the patentee-plaintiff can demonstrate "that he did not have"  a
full and fair chance to litigate the validity of his patent in  "the
earlier case."  See also Ex parte Varga, 189 USPQ 209 (Bd. App. 1973).
As stated in Kaiser Industries Corp. v. Jones & Laughlin Steel Corp.,
515 F.2d 964, 987, 185 USPQ 343, 362 (3rd Cir. 1975):

In fashioning the rule of Blonder-Tongue, Justice White for a unanimous
Court made it clear that a determination of patent invalidity, after a
thorough and equitable judicial inquiry, creates a collateral estoppel
barrier to further litigation to enforce that patent.

Under  35 U.S.C. 251, the Commissioner can reissue a patent only if
there is "error without any deceptive intention." The Commissioner is
without authority to reissue a patent when "deceptive intention" was
present during prosecution of the parent application. See In re Clark,
522 F.2d 62, 187 USPQ 209 (CCPA 1975) and In re Heany, 1911 C.D. 138,
180 (1911). Thus, the collateral estoppel barrier applies where reissue
is sought of a patent which has been held invalid or unenforceable for
"fraud" or "violation of duty of disclosure" in procuring of said
patent. It was held in In re Kahn, 202 USPQ 772, 773 (Comr. Pats. 1979):

Therefore, since the Kahn patent was held invalid, inter alia, for 
"failure to disclose material facts of which * * * [Kahn] was aware" 
this application may be stricken under  37 CFR 1.56 via the doctrine of
collateral estoppel as set forth in Blonder-Tongue, supra.                    
+++        The Patent and Trademark Office . . . has found no clear
justification for not adhering to the doctrine of collateral estoppel
under Blonder-Tongue in this case.  Applicant has had his day in court.
He appears to have had a full and fair chance to litigate the validity
of his patent.

See MPEP Section  2259 for collateral estoppel in reexamination
proceedings.

---SECTION---2013 Protests Involving Issues of Fraud, Inequitable
Conduct, and/or Violation of Duty of Disclosure

37 CFR 1.291 permits protests by the public against pending
applications.

Submissions under  37 CFR 1.291 are not limited to prior art documents
such as patents and publications, but are intended to include any
information, which in the protestor's opinion, would make or have made
the grant of the patent improper (see MPEP Section  1901.02). This
includes, of course, information indicating the presence of "fraud" or
"inequitable conduct" or "violation of the duty of disclosure," which
will be entered in the application file, generally without comment.  See
MPEP Section  1901.06.

Protests should be in conformance with  37 CFR 1.291(a) and (b), and
include a statement of the alleged facts involved, the point or points
to be reviewed, and the action requested. Any briefs or memoranda in
support of the petition, and any affidavits, declarations, depositions,
exhibits, or other material in support of the alleged facts, should
accompany the protest.

---SECTION---2014 Duty of Disclosure in Reexamination Proceedings 

As provided in  37 CFR 1.555, the duty of disclosure in reexamination
proceedings applies to the patent owner. That duty is a continuing
obligation on the part of the patent owner throughout the proceedings.
However, issues of  "fraud," " inequitable conduct," or  "violation of
duty of disclosure" are not considered in reexamination. See MPEP
Section  2280. If questions of "fraud" or  "inequitable conduct"  or 
"violation of the duty of disclosure" are discovered during
reexamination proceedings, the existence of such questions will be noted
by the examiner in an Office action without further comment. See MPEP
Section  2258.

For the patent owner's duty to disclose prior or concurrent proceedings
in which the patent is or was involved, see MPEP Section  2282 and
Section  2001.06(c).

---SECTION---2016 Fraud, Inequitable Conduct, or Violation of Duty of
Disclosure Affects All Claims

A finding of "fraud," " inequitable conduct," or violation of duty of
disclosure with respect to any claim in an application or patent,
renders all the claims thereof unpatentable or invalid.  See Chromalloy
American Corp. v. Alloy Surfaces Co., 339 F. Supp. 859, 173 USPQ 295
(D.Del. 1972) and Strong v. General Electric Co., 305 F. Supp. 1084, 162
USPQ 141 (N.D. Ga. 1969), aff'd, 434 F.2d 1042, 168 USPQ 8 (5th Cir.
1970), cert. denied, 403 U.S. 906 (1971).  In J. P. Stevens & Co. v. Lex
Tex Ltd., 747 F.2d 1553, 1561, 223 USPQ 1089, 1093-94 (Fed. Cir. 1984),
the court stated:

Once a court concludes that inequitable conduct occurred, all the claims
__  not just the particular claims in which the inequitable conduct is
directly connected __  are unenforceable.  See generally, cases
collected in 4 Chisum, PATENTS, paragraph 19.03[6] at 19-85 n. 10
(1984). Inequitable conduct "goes to the patent right as a whole,
independently of particular claims."  In re Clark 522 F.2d 623, 626, 187
USPQ 209, 212 (CCPA).

The court noted in footnote 8 of Stevens:

In In re Multiple Litigation Involving Frost Patent,   540 F.2d 601,
611, 191 USPQ 241, 249 (3rd. Cir. 1976), some claims were upheld despite
nondisclosure with respect to others. The case is not precedent in this
court.

As stated in Gemveto Jewelry Co. v. Lambert Bros., Inc., 542 F. Supp.
933, 943, 216 USPQ 976, 984 (S. D. N. Y. 1984)  (quoting Patent Law
Perspectives, 1977 Developments, Section G.1 [1]-189):

The gravamen of the fraud defense is that the patentee has failed to
discharge his duty of dealing with the examiner in a manner free from
the taint of "fraud or other inequitable conduct."  If such conduct is
established in connection with the prosecution of a patent, the fact
that the lack of candor did not directly affect all the claims in the
patent has never been the governing principle. It is the inequitable
conduct that generates the unenforceability of the patent and we cannot
think of cases where a patentee partially escaped the consequences of
his wrongful acts by arguing that he only committed acts of omission or
commission with respect to a limited number of claims. It is an all or
nothing proposition. [Emphasis in original.]

---SECTION---2022.05 Determination of "Error Without Any Deceptive
Intention"

If the application is a reissue application, the action by the examiner
may extend to a determination as to whether at least one "error"
required by  35 U.S.C. 251 has been alleged, i.e., identified. Further,
the examiner should determine whether applicant has averred in the
reissue oath or declaration, as required by  37 CFR 1.175(a)(2), (b)(1),
and (b)(2), that all "errors" arose "without any deceptive intention."
However, the examiner should not normally comment or question as to
whether in fact the averred statement as to lack of deceptive intention
appears correct or true.  See MPEP Section  1414.

