Duty to Disclose: Dayco Products v. Total Containment, 7 J. Marshall Rev. Intell. Prop. L. 325 (2008)

The duty to disclose, as set forth by 37 C.F.R. § 1.56 and case law from the Federal Circuit, should be followed during the prosecution of all patent applications. This duty requires that inventors and their attorneys provide the United States Patent and Trademark Office with a list identifying relevant publications, patent applications, patents, legal proceedings, written rejections from patent examiners, and sales, both public and confidential. “Relevant” means relevant to the claims. The consequences of failing in this duty can be severe, namely, a holding of inequitable conduct.

Inequitable conduct, in the patenting context, requires two prongs—materiality of the publication and intent to deceive the Patent Office. Patent practitioners are confronted by many gray areas, e.g., the boundaries of the duty, whether disclosing an Abstract can satisfy the duty of disclosing the corresponding full length publication, how to remedy situations where an inventor failed to timely disclose the publication, and how to assess deceptive intent.