37 C.F.R. 1.555 Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.

1. (a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective reexamination occurs when, at the time a reexamination proceeding is being conducted, the Office is aware of and evaluates the teachings of all information material to patentability in a reexamination proceeding. Each individual associated with the patent owner in a reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding. The individuals who have a duty to disclose to the Office all information known to them to be material to patentability in a reexamination proceeding are the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding. The duty to disclose the information exists with respect to each claim pending in the reexamination proceeding until the claim is cancelled. Information material to the patentability of a cancelled claim need not be submitted if the information is not material to patentability of any claim remaining under consideration in the reexamination proceeding. The duty to disclose all information known to be material to patentability in a reexamination proceeding is deemed to be satisfied if all information known to be material to patentability of any claim in the patent after issuance of the reexamination certificate was cited by the Office or submitted to the Office in an information disclosure statement. However, the duties of candor, good faith, and disclosure have not been complied with if any fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct by, or on behalf of, the patent owner in the reexamination proceeding. Any information disclosure statement must be filed with the items listed in § 1.98(a) as applied to individuals associated with the patent owner in a reexamination proceeding, and should be filed within two months of the date of the order for reexamination, or as soon thereafter as possible.
2. (b) Under this section, information is material to patentability in a reexamination proceeding when it is not cumulative to information of record or being made of record in the reexamination proceeding, and
   1. (1) It is a patent or printed publication that establishes, by itself or in combination with other patents or printed publications, a prima facie case of unpatentability of a claim; or
   2. (2) It refutes, or is inconsistent with, a position the patent owner takes in:
      1. (i) Opposing an argument of unpatentability relied on by the Office, or
      2. (ii) Asserting an argument of patentability.

A prima facie case of unpatentability of a claim pending in a reexamination proceeding is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

1. (c) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.552(c).

The duty of disclosure in reexamination proceedings filed under 35 U.S.C. 302 applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner. That duty is a continuing obligation on all such individuals throughout the proceeding. The continuing obligation during the reexamination proceeding is that any such individual to whom the duty applies who is aware of, or becomes aware of, patents or printed publications which (A) are material to patentability in a reexamination proceeding, and (B) which have not previously been made of record in the patent file, must bring such patents or printed publications to the attention of the Office.

Such individuals are strongly encouraged to file information disclosure statements in accordance with 37 CFR 1.98, within two months of the date of the order to reexamine, or as soon thereafter as possible, in order to bring the patents or printed publications to the attention of the Office. An information disclosure statement filed under 37 CFR 1.555 by the patent owner after the order for reexamination and before the first action on the merits may be submitted as part of the statement under 37 CFR 1.530, or it may be filed as a separate paper. If the information disclosure statement is filed as part of a statement under 37 CFR 1.530, the submission may include a discussion of the patentability issues in the reexamination. If, however, the submission is filed as a separate paper, not part of a statement under 37 CFR 1.530, the submission must be limited to a listing of the information disclosed and an explanation of its relevance. See 37 CFR 1.98. Any discussion of the information disclosed relating to patentability issues in the reexamination would be improper.

To comply with 37 CFR 1.98(a) as to documents cited in the patent or its parent applications that a party wishes to submit, the party must supply copies of the information. 37 CFR 1.98(a)(2) requires a legible copy of:

1. (1) each foreign patent;
2. (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
3. (3) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion;
4. (4) all other information or that portion which caused it to be listed.

The exception to the requirement for copies noted in 37 CFR 1.98(d) does not apply to ex parte and inter partes reexamination proceedings, since a reexamination proceeding does not rely on the patent for an earlier effective filing date.

Any individual substantively involved in the reexamination proceeding filed under 35 U.S.C. 302 may satisfy the duty by disclosing the information to the attorney or agent having responsibility for the reexamination proceeding or to a patent owner acting in their own behalf. A patent owner may satisfy the duty by disclosing the information to the attorney or agent having responsibility for the reexamination proceeding. An attorney, agent, or patent owner who receives information has no duty to submit such information if it is not material to patentability in the reexamination proceeding. See 37 CFR 1.555(b) for the definition of "material to patentability."

The responsibility of compliance with 37 CFR 1.555 rests on all such individuals. Any fraud practiced or attempted on the Office or any violation of the duty of disclosure through bad faith or intentional misconduct by any such individual results in noncompliance with 37 CFR 1.555(a). This duty of disclosure is consistent with the duty placed on patent applicants by 37 CFR 1.56. Any such issues raised by the patent owner or the third party requester during a reexamination proceeding will merely be noted as unresolved questions under 37 CFR 1.552(c).

All such individuals who fail to comply with 37 CFR 1.555(a) do so at the risk of diminishing the quality and reliability of the reexamination certificate issuing from the proceeding.

However, the material to patentability standard set forth in 37 CFR 1.56(b), which is applicable to patent applications, and not the standard set forth in 37 CFR 1.555(b), applies in ex parte reexamination proceedings ordered under 35 U.S.C. 257 (as a result of a supplemental reexamination proceeding). Like patent application examination, ex parte reexamination proceedings ordered under 35 U.S.C. 257 are not limited to patents and printed publications. In contrast, the material to patentability standard under 37 CFR 1.555(b), which is applicable to ex parte reexaminations filed under 35 U.S.C. 302, is limited to patents and printed publications. Any reference to "applicant" in 37 CFR 1.56(b) will be read as "patent owner" in the context of ex parte reexamination proceedings ordered under 35 U.S.C. 257, because these proceedings are only available to a patent owner. See MPEP § 2818.01; see also MPEP Chapter 2000.

See MPEP § 2282 (ex parte reexamination) and MPEP § 2686 (inter partes reexamination) for the patent owner’s duty to disclose prior or concurrent proceedings in which the patent is or was involved.