July 27, 2011
On July 21, 2011, the U.S. Patent and Trademark Office (USPTO) provided notice of a proposed rule change regarding the duty-to-disclose standards.
Patent applicants have a duty to disclose to the USPTO “all information known to that individual to be material to patentability” under the rules. The USPTO has now proposed changing the applicable rules to define information to be "material" under more-simplified standards recently set forth by the Federal Circuit in Therasense, Inc. v. Becton Dickinson & Co. (See our previous IP law alert regarding this case here.)
The existing standards for whether information is "material" are somewhat complex. With these changes, the USPTO will consider information to be "material" only under two circumstances. First, information is material if it meets a “but-for” test for patentability. Under this "but-for" test, materiality is established only if the patent application would not issue in view of the information. Second, information is material if the applicant engages “in affirmative egregious misconduct before the Office as to the information.”
The notice states that the rule change is intended to harmonize the USPTO’s rules with the inequitable conduct standards now applied by the courts after Therasense. The notice also states that this standard change should reduce the number of accusations of inequitable conduct in litigation and reduce the incentive to submit information of marginal relevance to the USPTO during patent application pendency.
The USPTO requires that public comments regarding this proposed rule change be received on or before September 19, 2011. Fitch Even attorneys are monitoring the progress of this rule change at the USPTO and will report when the final rule is passed.
For more information, please contact Fitch Even partner Nicholas T. Peters.