37 CFR 1.56 (pre‑AIA): Duty to disclose information material to patentability

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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1.56 (pre‑AIA)    Duty to disclose information material to patentability.

[Editor Note: Para. (c)(3) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]

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  • (c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
    • (1) Each inventor named in the application;
    • (2) Each attorney or agent who prepares or prosecutes the application; and
    • (3) 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.
  • (d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
  • (e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751, May 19, 1982, effective July 1, 1982; para. (c), 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
[*See § 1.56 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]