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USPTO Clarifies "Duty to Disclose" Language in Oaths/Declarations

By Two-Seventy-One Patent Blog

The USPTO has indicated that, in order to comply with 37 CFR 1.63(b)(3), an oath or declaration must 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.

The problem? Applicants are using outdated language in their documents:

[S]ome applicants in their oaths or declarations continue to use "material to the examination of the application" in place of "material to patentability," and "in accordance with 1.56(a)" in place of "as defined in 1.56." In response to proper objections made during the examination of pending patent applications, practitioners have argued that the oaths and declarations executed by applicants with the outdated language in question are proper and meet the requirements set forth in 37 CFR 1.63.

The solution? Use the express language provides in 37 CFR 1.63:

With this Notice, the Office is putting applicants and their representatives on notice that compliance with the express language of 37 CFR 1.63 will now be required. Additionally, to the extent the Reply to Comment 38 in the 1992 Final Rule authorized the continued use of the "material to examination" and "in accordance with 37 CFR 1.56(a)," language, this authorization it is hereby rescinded, and reliance on the Reply to Comments 38 will no longer be accepted. If an oath or declaration filed on or after June 1,2008, does not include the express language set forth in 37 CFR 1.63(b)(3), the Office will object to the oath or declaration as failing to comply with 37 CFR 1.63. A supplemental oath or declaration pursuant to 37 CFR 1.67 will then be required.

See the PTO notice here (link)

Full post as published by Two-Seventy-One Patent Blog on January 23, 2008 (boomark / email).