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United States Patent and Trademark Office › Duty to Disclose

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Sterne, Kessler, Goldstein & Fox P.L.L.C.

Submitting Trade Secret, Proprietary, and Protective Order Materials in Reexamination and Reissue

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

The requirement for disclosure, candor, and good faith between an applicant/patent owner and the U.S. Patent and Trademark Office (USPTO) serves an important public interest. Succinctly, each individual associated with the...more

Skadden, Arps, Slate, Meagher & Flom LLP

USPTO Provides Guidance on Using AI-Based Tools in Filing and Preparing Patent and Trademark Applications

Skadden, Arps, Slate, Meagher & Flom LLP on

On April 11, 2024, the United States Patent and Trademark Office (USPTO or Office) published new guidance on the use of artificial intelligence (AI) based tools in connection with preparing and prosecuting patent and...more

Haug Partners LLP

Can Machines Invent Drugs: Patent Law Seeks to Prioritize Human Innovation as Artificial Intelligence Inventions Rise

Haug Partners LLP on

In the 1950’s, Alan Turing famously asked, “Can machines think?” Decades later, artificial  intelligence—a term coined after Turing’s death—has become a facet of our everyday lives.  Artificial Intelligence (AI) can be used...more

Womble Bond Dickinson

For All Patent/Trademark Practitioners: USPTO Provides Guidance for Use of AI in Preparing USPTO Submissions

Womble Bond Dickinson on

The USPTO expounds a clear message for patent and trademark attorneys, patent agents, and inventors: use of artificial intelligence (AI), including generative AI, in patent and trademark activities and filings before the...more

Sunstein LLP

AI in the Patent Landscape: USPTO Directive Explores Inventorship Dynamics

Sunstein LLP on

In response to the rapidly evolving landscape of innovation and the integration of artificial intelligence (AI) into creative processes, the United States Patent and Trademark Office (USPTO) issued guidance effective February...more

American Conference Institute (ACI)

[Event] 14th Summit on Biosimilars & Innovator Biologics - June 27th - 28th, Boston, MA

American Conference Institute (ACI) on

Biologics have become the fastest-growing class of therapeutic compounds. They have provided innovative treatment alternatives for people who suffer from some of the most serious medical conditions known to man. The...more

Foley & Lardner LLP

USPTO Discusses Duty of Disclosure and Duty of Reasonable Inquiry

Foley & Lardner LLP on

On February 23, 2023, the U.S. Patent and Trademark Office (USPTO) held a virtual panel discussion on the duty of disclosure and duty of reasonable inquiry. While both duties apply regardless of technology area, the...more

Rothwell, Figg, Ernst & Manbeck, P.C.

How to Effectively Use Patent Counsel to Navigate the USPTO’s Duty of Candor Guidance Regarding FDA Submissions

Rothwell, Figg, Ernst & Manbeck, P.C. on

The United States Patent and Trademark Office (USPTO) issued updated guidance on the duty of candor and duty to disclose in relation to submissions made to other government agencies, particularly the Food and Drug...more

McDermott Will & Emery

PTO Issues Notice on Duties of Disclosure and Reasonable Inquiry

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) issued a notice on July 29, 2022, titled “Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and...more

Foley & Lardner LLP

USPTO Underscores Duty of Disclosure Pertaining To FDA Submissions

Foley & Lardner LLP on

The USPTO has issued a Federal Register Notice discussing how the duty of candor and good faith in dealing with the USPTO applies to “information and statements material to patentability … received from or submitted to the...more

Amundsen Davis LLC

Tense Situations: Failure To Clarify Working Prototypes Can Be Fraud

Amundsen Davis LLC on

The United States Patent and Trademark Office issued important guidance in the Federal Register on July 1, 2021 regarding ties between the duty of disclosure and enablement. When applying for a patent, an applicant must...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: Information Disclosure: Avoiding Common Pitfalls

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

An essential part of U.S. patent prosecution is the duty of disclosure, which requires the disclosure of all known information that is material to patentability. 37 C.F.R. § 1.56....more

Foley & Lardner LLP

USPTO Access To Relevant Prior Art Initiative

Foley & Lardner LLP on

In an October 25, 2018 Federal Register Notice, the USPTO announced staged implementation of the first phase of an initiative aimed at “leveraging electronic resources to retrieve information” of record in one patent...more

Knobbe Martens

Recent Development on Patent Eligibility of Method of Treatment Claims

Knobbe Martens on

The United States Patent and Trademark Office (USPTO) recently published a new revision to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP) (Revision 08.2017). This revision added a number of chapters...more

Foley & Lardner LLP

USPTO Again Proposes To Revise Duty Of Disclosure In View Of Therasense

Foley & Lardner LLP on

More than five years after the Federal Circuit’s en banc decision in Therasense and its first proposed rulemaking under that decision, the USPTO has issued a new proposed rulemaking to adapt its duty of disclosure rule (37...more

Foley & Lardner LLP

Help The USPTO Leverage Prior Art From Related Patent Applications

Foley & Lardner LLP on

The USPTO is seeking input on how it can leverage prior art information available on-line in related patent applications in order to “improve patent examination quality and efficiency” and reduce “applicant’s burden to...more

Foley & Lardner LLP

Federal Circuit Recognizes Limited Patent Agent Privilege

Foley & Lardner LLP on

In In re Queen’s University At Kingston, a divided panel of the Federal Circuit recognized a limited “attorney”-client privilege for patent agents. The majority’s decision to recognize a patent agent privilege is based...more

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