37 CFR 1.56 - Duty to disclose information material to patentability

Cite as37 CFR 1.56
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939 practice notes
  • Patent cases: Patent business goals; implementation,
    • United States
    • Federal Register October 05, 1998
    • October 5, 1998
    ...of the application and of their duty to disclose to the PTO all information known to the person to be material to patentability under 37 CFR 1.56. See 37 CFR The surcharge set forth in 37 CFR 1.16(e) would also be required if the oath or declaration is submitted on a date later than the fil......
  • Practice and procedure: Patent and trademark cases rules of practice; representation of others before Patent and Trademark Office,
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...to give information provided in confidence by the client. Paragraph (c) of Sec. 11.106 would require disclosure necessary to comply with 37 CFR 1.56 requiring a practitioner to disclose information material to patentability of pending claims. The practitioner may learn that a client intends......
  • Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act
    • United States
    • Federal Register August 14, 2012
    • August 14, 2012
    ...and acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in 37 CFR 1.56. 37 CFR 1.63 will simply state that a person may not execute an oath or declaration for an application unless that person has reviewed and unders......
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...to give information provided in confidence by the client. Paragraph (c) of Sec. 11.106 would require disclosure necessary to comply with 37 CFR 1.56 requiring a practitioner to disclose information material to patentability of pending claims. The practitioner may learn that a client intends......
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787 cases
  • Pfizer Inc. v. Teva Pharmaceuticals Usa, Inc., No. CIV.A. 04-754(JCL).
    • United States
    • United States District Courts. 3th Circuit. United States District Courts. 3th Circuit. District of New Jersey
    • March 20, 2007
    ...candor and good faith' to the PTO." M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d 1335, 1339 (Fed.Cir.2006) (quoting 37 C.F.R. § 1.56(a) (2004)). Breaching this duty can constitute inequitable conduct, which renders the patent unenforceable. Id. at An inequitable conduct an......
  • Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co., No. C 96-4061-MWB.
    • United States
    • United States District Courts. 8th Circuit. Northern District of Iowa
    • September 29, 1998
    ...in deciding whether to allow the application to issue as a patent.'" Id. (quoting Halliburton, 925 F.2d at 1440, in turn quoting 37 C.F.R. § 1.56 (1989)). "However," the Federal Circuit Court of Appeals observed, "we also note that a patentee need not cite an otherwise material reference to......
  • Akzo N.V. v. U.S. Intern. Trade Com'n, No. 86-877
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • December 22, 1986
    ...any other prior art reference disclosed the Blades '756 process. 14 This standard is identical to the PTO standard of materiality. 37 C.F.R. Sec. 1.56(a). 15 This case differs from Viscofan S.A. v. U.S. International Trade Commission, 787 F.2d 544, 552, 229 USPQ 118, 124 (Fed.Cir.1986), bec......
  • Select Creations, Inc. v. Paliafito America, Inc., No. 91-C-1240.
    • United States
    • United States District Courts. 7th Circuit. United States District Court of Eastern District of Wisconsin
    • December 21, 1992
    ...of March 8, 1990 of the fact that a nearly identical item was on sale in the United States at least since August 1988, in violation of 37 C.F.R. § 1.56(a); (b) the use of the United States mails to send items such as samples, supplies of packaging, and catalogues relating to the Game, in wh......
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108 firm's commentaries
  • Intellectual Property Basics
    • United States
    • JD Supra United States
    • November 11, 2011
    ...public” even if the disclosure’s inadequacy was unintentional. U.S. Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d 1209 (Fed. Cir. 1996). 143 37 C.F.R. §§1.56, 1.97, 1.98 (“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith dealin......
  • Intellectual Property Basics
    • United States
    • JD Supra United States
    • January 2, 2018
    ...applications filed on or after March 16, 2013, failure to comply with the best model requirement no longer invalidates the patent. 137 37 C.F.R. §§1.56, 1.97, 1.98 (“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith dealin......
  • Intellectual Property Basics (Updated)
    • United States
    • JD Supra United States
    • November 24, 2014
    ...applications filed on or after March 16, 2013, failure to comply with the best model requirement no longer invalidates the patent. 143 37 C.F.R. §§1.56, 1.97, 1.98 (“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith dealin......
  • Patents Comparative Guide
    • United States
    • Mondaq United States
    • May 21, 2019
    ...with the filing and prosecution of an application have a duty of candour and good faith to the US Patent and Trademark Office (USPTO) (37 CFR § 1.56(a)). Breaching this duty of candour and good faith may constitute inequitable conduct that can render all claims of a patent unenforceable. Fu......
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22 books & journal articles
  • Patent Due Diligence
    • United States
    • Intellectual Property and Technology Due Diligence
    • January 1, 2018
    ...consider it important in deciding whether to allow the application to issue as 199. 35 U.S.C. § 273(e)(5). 200. 35 U.S.C. § 273(g). 201. 37 C.F.R. § 1.56. 202. Therasense, Inc. v. Becton Dickinson, 649 F.3d 1276 (Fed. Cir. 2011) (en 304 ChAPTEr 6 a patent.”203The information is not material......
  • Remedies
    • United States
    • ANDA litigation: strategies and tactics for pharmaceutical patent litigators
    • June 2, 2016
    ...(N.D. Ill. 2007) (citing Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 877 (Fed. Cir. 1988)). 100. Id. (citing 37 C.F.R. § 1.56(a) (2007)); Bruno Indep. Living Aids, Inc. v. Acron Mobility Servs., Ltd., 394 F.3d 1348, 1350–51 (Fed. Cir. 101. Monsanto Co. v. Bayer Biosci......
  • Declaratory judgment actions, covenants not to sue, and bad patents: a call to allow the judiciary to weed out bad patents while adhering to the "case or controversy" requirement.
    • United States
    • The Journal of High Technology Law Vol. 13 Nbr. 1, January 2013
    • January 1, 2013
    ...investigative mechanisms of the USPTO, it held, were not the best forum from which a determination of intent to mislead, as defined by 37 C.F.R. 1.56(d) (1977). See id.; CHISUM, supra note 23, at [section] 19.03[6][a][i] (noting that the Patent Office handles inequitable conduct differently......
  • Responding to the Complaint
    • United States
    • ANDA litigation: strategies and tactics for pharmaceutical patent litigators
    • June 2, 2016
    ...evidence that the claims were indefinite. 3. Inequitable Conduct The doctrine of inequitable conduct arises from the requirements of 37 C.F.R. § 1.56 (Rule 56), which creates a “duty of candor and good faith in dealing with the [Patent] Office.” A finding of inequitable conduct may render t......
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