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Disclosure, Inquiry, and Other Agencies

USPTO notice, July 2022. Read from the primary document; quotations verified against its own text.

What it says

A July 2022 USPTO notice clarifies that the duty of candor includes disclosing information material to patentability and that each party submitting a paper has a separate duty to perform an inquiry reasonable under the circumstances, including reviewing documents to identify material information, and addresses statements to the USPTO that are inconsistent with statements submitted to the FDA and other agencies.

There are two duties here, and the second is the one that surprises people.

The first is the duty to disclose information material to patentability. The second is a separate duty on each party submitting a paper to perform an inquiry reasonable under the circumstances, including reviewing documents to identify material information.

A duty to disclose reaches what you have. A duty of reasonable inquiry reaches what a reasonable review would have surfaced.

The notice also addresses statements made to the USPTO that are inconsistent with statements the same party submitted to the FDA or another agency.

What This Does Not Decide

This record sits closer to the UPL line than most. Materiality is defined by reference to patentability. Reporting the duty is description; applying it to anyone's documents is a legal conclusion about their matter.
  • It does not say whether particular information is material.
  • It does not say whether a specific inquiry was reasonable.
  • It does not say whether any conduct breached a duty.

Educational, not legal advice. This page reports what an authority says. Applying it to a matter is work for a registered practitioner with the file in front of them.

Sources