What do I need to disclose in a patent application?

When an applicant files a patent application with the United States Patent and Trademark Office they are asking for the right to exclude others from using the invention claimed by the applicant. The interests of the public are affected by patent grants. For this reason, the United States Patent and Trademark Office expects patent applicants to disclose all information material to the patentability of the invention claimed in the patent application.

The obligations of the patent applicant regarding disclosure are set in 37 CFR 1.56 “Duty to disclose information material to patentability.” 37 CFR 1.56(a) states that the “duty of candor and good faith” is owed “in dealing with the Office” and that all associated with the filing and prosecution of a patent application 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 and the Office of the Commissioner for Patents.

The duty to disclose extends to all individuals involved in the filing or prosecution of a patent. 37 CFR 1.56(c) states that individuals associated with the filing or prosecution of a patent application are:

Each inventor named in the application;
Each attorney or agent who prepares or prosecutes the application; and
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.
This essentially means that the inventor, the patent attorney and the entity who has been assigned the patent have a duty to disclose information material to the patentability of a patent application. But this duty is limited to people who are substantively involved in the preparation or prosecution of the application and the duty does not extend to typists, clerks, and similar personnel who assist with an application.

The term information means all of the kinds of information required to be disclosed and includes any information which is material to patentability. Prior art such as patents, publications, information on enablement, possible prior public uses, sales, offers to sell, derived knowledge, prior invention by another, inventorship conflicts, and the like are considered material to patentability. “Materiality is not limited to prior art but embraces any information that a reasonable examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent.” Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1234, 66 USPQ2d 1481, 1486 (Fed. Cir. 2003) Essentially if the applicant for a patent knows of prior art which would render their invention obvious they must disclose it to the patent examiner.

If information is not material, there is no duty to disclose the information to the patent examiner. It is theoretically possible for a patent applicant to draft claims and a specification to avoid a case of obviousness over a piece of prior art and then to be able to withhold the prior art from the examiner. But it is a good practice for the patent applicant to submit the information to the patent examiner, even though they may not be required to do so. The disclosure can strengthen the patent and the patent applicant avoid will avoid the accusation that it was their intent to deceive the United States Patent and Trademark Office.

The penalty for a patent applicant that has been found to violate the duty of disclosure with respect to any claim in a patent application or patent, renders all the claims thereof unpatentable or invalid. So it is in the best interests of patent applicants to carefully discuss all the information they have, about their invention and information about prior art, with their patent attorney.