USPTO Clarifies "Duty to Disclose" Language in Oaths/Declarations
The USPTO has indicated that, in order to comply with 37 CFR 1.63(b)(3), an oath or declaration must acknowledge a duty to disclose information material to patentability as defined in 37 CFR 1.56:
All oaths or declarations filed on or after June 1,2008, will be required to include the language expressly set forth in 37 CFR 1.63, including that in 37 CFR 1.63(b)(3). This notice applies to oaths or declarations filed in all nonprovisional patent applications, including reissue applications.The problem? Applicants are using outdated language in their documents:
[S]ome applicants in their oaths or declarations continue to use "material to the examination of the application" in place of "material to patentability," and "in accordance with 1.56(a)" in place of "as defined in 1.56." In response to proper objections made during the examination of pending patent applications, practitioners have argued that the oaths and declarations executed by applicants with the outdated language in question are proper and meet the requirements set forth in 37 CFR 1.63.The solution? Use the express language provides in 37 CFR 1.63:
With this Notice, the Office is putting applicants and their representatives on notice that compliance with the express language of 37 CFR 1.63 will now be required. Additionally, to the extent the Reply to Comment 38 in the 1992 Final Rule authorized the continued use of the "material to examination" and "in accordance with 37 CFR 1.56(a)," language, this authorization it is hereby rescinded, and reliance on the Reply to Comments 38 will no longer be accepted. If an oath or declaration filed on or after June 1,2008, does not include the express language set forth in 37 CFR 1.63(b)(3), the Office will object to the oath or declaration as failing to comply with 37 CFR 1.63. A supplemental oath or declaration pursuant to 37 CFR 1.67 will then be required.See the PTO notice here (link)
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From MPEP Rev. 14, Nov. 1992 (the first revision after the rule change), discussing the change from "material to the examination" to "material to patentability" standard:
"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.... 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...."
Contrast this with Director Dudas' advice regarding applicant's duties arising from the differences between the standards (at the last paragraph on page 2 of the Revised Procedure), and you'll understand a little more of where the Office is headed.
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