USPTO Announces New Duty of Disclosure Declaration Requirement

WASHINGTON, DC - The United States Patent and Trademark Office (USPTO) announced that it will no longer accept as complying with 37 CFR 1.63(b)(3) an oath or declaration that does not acknowledge a duty to disclose information material to patentability as defined in 37 CFR 1.56.

All oaths or declarations filed on or after June 1, 2008, will be required to include the language expressly set forth in 37 CFR 1.63, including that in 37 CFR 1.63(b)(3). This notice applies to oaths or declarations filed in all nonprovisional patent applications, including reissue applications.

This particular announcement (Duty of Disclosure Language Set Forth in Oaths or Declarations Filed in Nonprovisional Patent Applications) was signed on January 22, 2008, by the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO Jon Dudas.

This change is necessary because in 1992, the USPTO amended 37 CFR 1.63 to conform to amendments made in 37 CFR 1.56, which resulted in a change in disclosure requirements from what a reasonable examiner would want to know (i.e., the "material to examination" standard) to requiring disclosure when the information is material to patentability, which is supposed to require less disclosure, at least insofar as the USPTO is concerned.  Nevertheless, practitioners have continued to submit oaths that are not in accordance with Rules 1.63 and 1.56, but rather relate to the outdated language in effect prior to the 1992 amendments.

For full text of the announcement, please check http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/duty_of_disclosure.pdf