Revision of the Materiality to Patentability Standard for the Duty To Disclose Information in Patent Applications
The United States Patent and Trademark Office (Office or PTO) is proposing to revise the standard for materiality for the duty to disclose information in patent applications and reexamination proceedings in light of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit or Court) in Therasense, Inc. v. Becton, Dickinson & Co. Specifically, the Office is proposing to revise the materiality standard for the duty to disclose to match the materiality standard, as defined in Therasense, for the inequitable conduct doctrine. While Therasense does not require the Office to harmonize the materiality standards underlying the duty of disclosure and the inequitable conduct doctrine, the Office believes that there are important reasons to do so. The materiality standard set forth in Therasense should reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, consequently reducing the incentive to submit information disclosure statements containing marginally relevant information and enabling applicants to be more forthcoming and helpful to the Office. At the same time, it should also continue to prevent fraud on the Office and other egregious forms of misconduct. Additionally, harmonization of the materiality standards is simpler for the patent system as a whole.
- Task
- Read the news
- Patent or trademark
- both
- Legacy system
- —
- Current entry point
- www.federalregister.gov/documents/2011/07/21/2011-18408/revision-of-the-materiality-to-patentability-standard-for-the-duty-to-disclose-information-in-patent (permanent link in the Federal Register, verified 2026-09-30)
- Legacy system and where it moved
- No legacy system name mention in title or summary )
- Fee
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- What you need (account or API key)
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- Published
- 2011-07-21
- Document type
- Proposed Rule
- Source
- USPTO documents published in the Federal Register (Federal Register API)(retrieved 2026-10-06)
Everything in the same category
Read the news (all 1988) · both (all 2333)
Related entry points
- Revision of the Duty To Disclose Information in Patent Applications and Reexamination Proceedings
- Revision of Patent Term Extension and Adjustment Provisions Relating to Appellate Review and Information Disclosure Statements
- Changes To Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims
- Access to Relevant Prior Art Initiative
- Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al.
- Changes to Patent Term Adjustment in View of the Federal Circuit Decision in Novartis v. Lee
- Revision of Patent Term Adjustment Provisions Relating to Appellate Review
- Pilot Program for Extended Time Period To Reply to a Notice To File Missing Parts of Nonprovisional Application
- Changes To Require Identification of Attributable Owner
- Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board
- Changes To Implement the 2002 Inter Partes Reexamination and Other Technical Amendments to the Patent Statute
- Patent Term Adjustment Procedures in View of the Federal Circuit Decision in Supernus Pharm., Inc. v. Iancu
- Request for Comments on Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board
- Submission for OMB Review
- Request for Comments on Determining Whether a Claim Element Is Well-Understood, Routine, Conventional for Purposes of Subject Matter Eligibility
- Changes To Information Disclosure Statement Requirements and Other Related Matters