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USPTO Proposes Adopting But-For Materiality Standard for Duty to Disclose in Patent and Reexamination Proceedings
Practical Law Legal Update w-004-2256 (Approx. 3 pages)
USPTO Proposes Adopting But-For Materiality Standard for Duty to Disclose in Patent and Reexamination Proceedings
by Practical Law Intellectual Property & Technology
| Published on 31 Oct 2016 • USA (National/Federal) |
The US Patent and Trademark Office (USPTO) has published a proposed rule adopting a but-for materiality standard for the duty to disclose information in patent applications and reexamination proceedings, including inter partes reexamination proceedings before the Patent Trial and Appeal Board (PTAB).
On October 28, 2016, the US Patent and Trademark Office (USPTO) published a proposed rule revising the materiality standard for the duty to disclose information in patent applications and reexamination proceedings (81 Fed. Reg. 74987 (Oct. 28, 2016)). The proposed change brings the standard in line with the U.S. Court of Appeals for the Federal Circuit's decision in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011).
In Therasense, the Federal Circuit:
- Adopted a but-for standard for inequitable conduct allegations based on the materiality of a withheld reference, which requires a party alleging inequitable conduct to prove that the PTO would not have allowed a claim had it been aware of the undisclosed prior art.
- Recognized that affirmative egregious misconduct may satisfy the materiality prong of an inequitable conduct inquiry.
After the Therasense decision in 2011, the USPTO issued a notice of proposed rulemaking to harmonize the standards. No final rule was adopted at that time. Because so much time has passed, the USPTO is seeking further comment on the proposed changes before issuing a final rulemaking. The proposed changes would:
- Modify 37 C.F.R. § 1.56(a) and 37 C.F.R. § 1.555(a) to specify that the materiality standard for the duty of disclosure is but-for materiality.
- Modify 37 C.F.R. § 1.56(b) and 37 C.F.R. § 1.555(b) to define the but-for materiality standard as it is defined in Therasense.
- Amend 37 C.F.R. § 1.56(a) and 37 C.F.R. § 1.555(a) to explicitly include affirmative egregious misconduct.
Additionally, 37 C.F.R. § 1.933 sets out the standard for the duty of disclosure in inter partes reexamination proceedings. It is not directly amended by the proposed rule. However, 37 C.F.R. § 1.933's statement as to materiality incorporates 37 C.F.R. § 1.555, which would be amended.
As a practical matter, if adopted, these changes would:
- Reduce the incentive to submit marginally relevant material to the USPTO during prosecution.
- Decrease the number of inequitable conduct charges against applicants and practitioners for failing to disclose material information.
Practitioners wishing to comment on the proposed rule must submit their comments by December 27, 2016.