Duty of candor

Patent prosecution requires a duty of candor that includes a duty to provide material information to the USPTO during the prosecution of a patent application. This duty applies to patent counsel, inventors, and anybody else substantively involved in the preparation of the application and who is associated with an inventor, assignee, or one who is obligated to assign the patent application. Failure to comply with this duty can result in a finding of inequitable conduct, which can render the application unenforceable. The subject of inequitable conduct will be discussed in detail in Chapter 2. 

Because the proceedings in the PTO are ex parte in nature, the applicant has a "duty of candor" to be forthcoming in dealing with the PTO throughout the prosecution of the patent application. This duty of candor includes providing the PTO with all information that may be material to the examination of applicant s patent application (e.g., potential prior art) of which the applicant is aware. The duty of candor does not require the applicant to carry out a literature or prior art search. However, if the applicant or the applicant s representative is aware of relevant prior art, it must be disclosed. Normally, such relevant prior art is provided to the PTO in an Information Disclosure Statement (IDS). The duty to disclose relevant prior art continues throughout the prosecution of the application. Therefore, if the applicant later becomes aware of relevant prior art, including prior art found by patent... 

Beyond the honesty in communication (candor) required by the U.S. patent system to issue strong patents, there is an affirmative duty on applicants for patents in the United States to disclose any material information that they are aware of that might affect the patentability of their invention. Although we have already learned that examiners at the USPTO will independently search the prior art during patent examination, they often do not have the familiarity with the subject matter that the patent applicants and their representatives do. This collective duty of disclosure, candor, and good faith are critical to the mission of not only the USPTO but to the applicant as well, for at least three reasons. 

Because it is such an important topic and because the inventor is a party whose actions and statements can directly affect the outcome of the patent prosecution, the entire substance of the duty of disclosure, candor and good faith is produced here for you to read in its entirety before further explanation and some real examples from actual court cases. 

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