United States – Duty of Disclosure

Anyone applying for a patent in the USA must, according to 37 C.F.R. §1.56, disclose to the US Patent and Trademark Office (USPTO) any information of which he or she is aware and which is material to the patentability of the invention.

Examples of such information are patent specifications or other publications concerning related subject‐matter, e.g. references cited in the examination of the corresponding patent applications in other countries, or references known by the inventors or anyone else who is substantively involved in the handling of the application. The information may also comprise other particulars that may constitute a bar to the grant of a patent, such as the publication, working, selling or offering for sale of the invention, more than one year before the filing of the US patent application; information contradicting a position taken before the USPTO; information relating to inoperability of the invention and objections/oppositions raised against the invention by third parties or other patent offices. Moreover, information about other related US patent applications, if any, must be filed.

In essence, any information that might be detrimental to your patent application must be disclosed
to the USPTO.

The above‐mentioned information must be submitted to the USPTO as soon as possible and preferably within three months of the filing date of the US patent application or prior to the date the application is reached for examination. The duty of disclosure continues throughout the prosecution of the US patent application, which means that the USPTO should be notified of, for example, newly identified patent or other publications or office actions from other patent offices which are material to the patentability of the invention, as soon as possible and preferably within three months of their discovery. For procedural reasons, during the advanced stages of the examination the importance of prompt action becomes even greater. Otherwise, it may become necessary to consider the re‐filing of the application so that material information can be considered by the examiner.

In view of the above, we will, in our capacity as your attorney, forward to the USPTO all information of which we are already aware including any documents that are cited in corresponding applications in other countries, office actions from other countries and oppositions or observations filed by third parties against corresponding applications. In addition, we would ask you to send us without delay all other information falling under the duty of disclosure requirement, and also during the further prosecution of the patent application, to let us have any such information to be forwarded to the USPTO on an expeditious basis.

As a matter of routine, we will also make a final review of our file upon payment of the issue fee, to make sure that all relevant information has been properly disclosed to the USPTO.

We would point out that the intentional withholding such material information or knowingly submitting incorrect or misleading information may have severe consequences.

The above obligation also applies to design patents and plant patents.