When a patent application is filed with the United States Patent and Trademark Office, the applicant currently must sign a Declaration attesting to several things. First, that the applicant is the original and first inventor of the claimed subject matter. Second, that the applicant has reviewed and understands the contents of the application. Third, that the applicant acknowledges the duty to disclose all information material to patentability. This is known as the duty of candor and good faith toward the USPTO.
The duty of candor and good faith requires that certain individuals disclose to the USPTO any information that they know of which is material to patentability. Information that is considered material to patentability is not always easy to define. In a harsh perspective, if the information would affect the decision of the USPTO during examination or granting of the application, it is material to patentability. However, some courts hold that information is material only if the USPTO would not have issued a patent had the information been presented to the USPTO. Information found in patent searches is always disclosed. Failure to do so would certainly invite an inequitable conduct argument against a patentee trying to sue someone for infringement, which could lead to the patent being held invalid or unenforceable. Information which runs counter to an argument of patentability that the applicant makes is also considered material to patentability.
The duty of candor and good faith applies not just to applicants, but to anyone involved in the preparation and prosecution of the application. The duty begins with the submission of a patent application and continues as long as the application, or continuation-in-part applications, are pending before the USPTO. That means if the applicant becomes aware of new information during the prosecution of the patent application, he or she must disclose it if it is material to patentability.
There is no duty to disclose information which is not relevant or material to patentability. The duty to disclose is satisfied if all information known to be material to the patentability of any claim is cited by the USPTO or disclosed by the applicant or the applicant’s attorney.