Enhanced Duty of Candor Before the PTO

A provision in the Manual of Patent Examining Procedure arguably broadens the duty to provide information that is material to patentability in respect to patent applications covering technologies already involved in litigation. This provision, MPEP 2001.06(c), requires the disclosure of material information from “related” litigation.

Case law interpreting the MPEP section suggests that it requires disclosure of information that goes beyond Rule 56. The provision appears to make related litigation, per se, material. Failure to disclose related litigation can result in severe consequences, including a finding of invalidity of the resulting patent and inequitable conduct.

The Federal Circuit appears to have taken a step back from the per se material position in a 2012 decision. The current thinking, as suggested by the decision, is if related litigation does not involve citation of prior art, a challenge to validity, or a pleading of un-patentability, then such litigation may not be material to patentability and need not be disclosed. In other words, it is not per se material simply because it is related.

The authors suggest that the general theme of jurisprudence on the topic is that the materiality of information depends on the circumstances. Applicants should always consider disclosure of related litigation documents. More specifically, an attorney should consider what litigation documents and information would materially affect the patentability of – or what litigation documents and information assert a position contrary to – that taken before the PTO examiner.