2001.01 Who Has Duty To Disclose [R-07.2022]

The duty to disclose applies to matters pending before the USPTO and extends broadly to “[e]ach individual associated with the filing and prosecution of a patent application” and “[e]ach individual associated with the patent owner in a reexamination proceeding.” 37 CFR 1.56(c) and 1.555(a). For patent applications, including reissue applications, these individuals include each inventor named in the application, each attorney or agent who prepares or prosecutes the application, and “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” This is intended to make clear that the duty does not extend to typists, clerks, and similar personnel who assist with an application. For reexamination proceedings, these individuals include “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding.” 37 CFR 1.555(a).

The duty of disclosure applies only to individuals, not to organizations. For instance, the duty of disclosure would not apply to a corporation or institution as such. However, it would apply to individuals within the corporation or institution who were substantively involved in the preparation or prosecution of the application, and actions by such individuals may affect the rights of the corporation or institution.