| General Information |
Referenced Items (94, 95, 96, 97, 98, 99, 100, 101, 102, 103, 104, 105, 106, 107, 108, 109, 110, 111, 112, 113, 114, 115) |
(112) Duty of Disclosure Language Set Forth in
Oaths or Declarations Filed in
Nonprovisional Patent Applications
Summary:
The United States Patent and Trademark Office (Office) will no longer
accept as complying with 37 CFR 1.63(b)(3) an oath or declaration that does
not 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.
Background:
Current 37 CFR 1.63 sets forth the requirements for an oath or
declaration filed in a nonprovisional patent application. 37 CFR 1.63(b)(3)
sets forth what the person making the oath or declaration must state when
acknowledging the duty of disclosure. Specifically, 37 CFR 1.63(b)(3)
requires persons making an oath or declaration to state that they
acknowledge their duty to disclose to the Office all information known to
the person to be "material to patentability as defined in § 1.56." This
language is incorporated in: 37 CFR 1.153, which sets forth the
requirements for an oath or declaration in a design application; 37 CFR
1.162, which sets forth the requirements for an oath or declaration in
plant patent applications; and 37 CFR 1.175 which sets forth the
requirements for an oath or declaration in a reissue application.
In 1992, the Office amended 37 CFR 1.63 to conform to amendments made in
37 CFR 1.56. See Duty of Disclosure, 57 FR 2021 (January 17, 1992) (final
rule). The amendments to 37 CFR 1.63(b)(3) resulted in "material to
patentability as defined in § 1.56" replacing "material to the examination
of the application in accordance with § 1.56(a)." Despite this amendment to
37 CFR 1.63(b)(3), some 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the oaths and declarations executed by applicants with the outdated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 in view of Comment 38 and the accompanying Reply in the 1992 Final
Rule. See Duty of Disclosure at 2027. Additionally, these practitioners
have argued that the outdated language should be accepted because the
Office has not routinely enforced strict compliance with current 37 CFR
1.63, as evidenced by the number of pending patent applications and issued
patents containing oaths or declarations with the outdated "material to
examination" and "in accordance with 37 CFR 1.56(a)," language.
Revised Procedure:
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.
For pending applications, the Office is hereby sua sponte waiving the
 Top of Notices (112) December 30, 2008 |
US PATENT AND TRADEMARK OFFICE |
1337 CNOG 483 |
express language requirement of 37 CFR 1.63(b)(3), where the oath or
declaration was filed prior to June 1, 2008. The express language of 37 CFR
1.63(b)(3) is waived only to the extent necessary such that an oath or
declaration containing the "material to examination" or "in accordance with
§ 1.56(a)" language, or both, will be accepted as acknowledging the
applicant's duty to disclose information "material to patentability" as
defined in 37 CFR 1.56.
For continuing applications filed under 37 CFR 1.53(b), other than
continuation-in-part applications, the Office will accept an oath or
declaration that contains the outdated language if the oath or declaration
otherwise complies with 37 CFR 1.63, and either: (1) was filed prior to
June 1, 2008; or (2) is being filed in a continuation or divisional
application in which a claim for benefit under 35 U.S.C. 120 has been made
to a prior-filed copending nonprovisional application, and the oath or
declaration is a copy of the previously accepted oath or declaration that
was filed prior to June 1, 2008.
For issued patents, the Office is hereby waiving nunc pro tunc the
express language requirement of 37 CFR 1.63(b)(3), where the oath or
declaration was filed prior to June 1, 2008. As stated above, the express
language of 37 CFR 1.63(b)(3) is waived only to the extent necessary such
that an oath or declaration containing the "material to examination" or "in
accordance with § 1.56(a)" language, or both, will be accepted as
acknowledging the applicant's duty to disclose information "material to
patentability" as defined in 37 CFR 1.56. Any supplemental oath or
declaration filed for an issued patent may simply be placed in the patent
application file without review or comment.
While not required, patentees and applicants are free to submit newly
executed oaths or declarations with the language expressly set forth in
current 37 CFR 1.63(b)(3), in accordance with 37 CFR 1.67.
Applicants are advised that, notwithstanding the waiver in the preceding
paragraphs, an applicant who has not disclosed information that is material
to patentability as defined in current 37 CFR 1.56, because it was believed
that the information was not "material to examination," should disclose
such information in order to discharge the applicant's duty of disclosure
as required by 37 CFR 1.56, and should file a supplemental oath or
declaration acknowledging that duty of disclosure.
Questions about this notice may be directed to the Office of Patent
Legal Administration at (571) 272-7701 or electronic mail message to
PatentPractice@uspto.gov.
January 22, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
(1327 OG 112)