Duty of disclosure

In accordance with the transitional regulations in 54 Para. 4 of the German Ordinance on Hazardous Substances biopersistent mineral fibres for use in automotive silencer units are exempted from the substitution obligation in accordance with Annexe V no. 7.2. and the duty of disclosure in accordance with no. 7.3. until October 2003. Concerning the use of fibres in vehicles, this means that an already existing substitute does not have to be used until that time. 

The duty of disclosure goes beyond just the applicant but includes anybody substantively associated with the filing and/or prosecution of the patent application, such as the inventors, applicants, assignees, and their representatives before the patent office. More will be said about inequitable conduct in section 2.3. 

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. 

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... 

Another form of misappropriation is the disclosure or use of a trade secret of another without consent, by a person who used "improper means" to acquire knowledge of the trade secret. "Improper means" generally include theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage. 

Engineers, perceiving a consequence of their professional duties to adversely affect the present or future public health and safety, shall formally advise their employers of clients and, if warranted, consider further disclosure. 

The latter view prevailed but generated yet another set of issues as to whether disclosure rules should be evaluated from the perspective of professionals or patients. Some courts took the narrower view of duty by ruling that professional standards should be used to determine what should be disclosed to patients. Although this theory of "lack of informed consent" was distinct from whether the health care provider had violated the standard of care, most courts, and many legislatures, confined the doctrine s operation to a very narrow set of circumstances consistent with the negligence standard underlying the standard of care in medical cases. Other courts took what is called the broader view and leaned toward the patient s perspective while requiring juries to impose the reasonable patient s view of risk rather than the particular patient s view of risks. 

Prior art is that information which was available in the public domain at the time of the production of the data on the invention. The search for prior art is therefore not just the relatively simple matter of checking the literature for conflicting patents. It also involves a detailed search of the literature for any piece of information that discloses any aspect of the invention. Such disclosures include not only patents but also any printed article or oral presentation, sales literature, offers for sale or actual sale of materials, which have been made publicly available. This is a time consuming activity but one which is necessary since it can avoid spurious applications being made which are later rejected by the Patent Office. Additionally, under the law the applicant has a duty to disclose all prior art that can have reasonably been known to exist. 

The first court decisions applied the same legal test to informed consent cases that was applied to negligence cases The practitioner was held to the standard of the reasonable person. Liability was imposed if the practitioner was found to have breached the duty to act as a reasonable practitioner would have acted under the same or similar circumstances. In determining the standard of care expected of the practitioner, the courts allowed other practitioners to testify concerning the warnings or disclosures that were necessary. Hence, the standard was a profession-set one, based on expert testimony and determined by the conduct of other practitioners. If the defendant practitioner provided that amount of information deemed to be reasonable by other practitioners, then a breach of duty did not occur. 

PJatent departments look forward with dismay to. .. disputes about inventorship (Grubb, 1982). Disputes arise for several reasons, and, in large companies, they make the task of ascertaining inventorship one of the thorniest aspects of patent practice. The duty falls to patent attorneys, who rely on the signed, dated, and witnessed documents known as disclosures or records of invention. These records, kept preferably in bound, numbered notebooks, are succinct histories prepared by some inventors when they conceive their ideas. Correct inventorship is crucial to the validity of U.S. patents, which differ in this way from grants issued by other countries. 

The extent of research and experiment must be commensurate with the dangers involved. A product must not be made available to the public without disclosure of those dangers that the application of reasonable foresight would reveal. Nor may a manufacturer rely unquestioningly on others to sound the hue and cry concerning a danger in its product. Rather, each manufacturer must bear the burden of showing that its own conduct was proportionate to the scope of its duty. ... 

Formally advise their employers or clients (and consider further disclosure, if warranted) if they perceive that a consequence of their duties will adversely affect the present or future health or safety of their colleagues or the public. 

The public disclosure section stipulates that. . all public officials shall be required to file an annual statement disclosing the name of any outside business or occupation outside his or her duties with the dty..Significance of this kind of provision If you, as a citizen and as an engineer employed in the business, government, academic or other sector, decide to pursue an elective office in your community, which is highly encouraged, be sure to meet disclosure requirements. 

When a chemical engineer notices behavior that is possibly or potentially unethical, the question is. What action should he or she take As noted in the AIChE code of ethics and in the NSPE code of ethics, there are specific avenues for action in the form of heuristics. For exanple, the AIChE code requires members to formally advise their employers or clients (and consider further disclosure, if warranted) if they perceive that a consequence of their duties will adversely affect the present or future health or safety of their colleagues or the public. The code also requires chemical engineers to offer objective criticism of the work of others. The code states that chemical engineers shall issue statements or present information only in an objective and truthful manner. It is clear that one has the responsibility to tell those who engage one s professional services when there is a problem or potential problem. It is clear that one should be truthful. What is not so clear is what a chemical engineer should do if, after such disclosure, the situation persists. 

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