The USPTO has published a notice of proposed rulemaking (NPRM) entitled, “Revision of the Materiality to Patentability Standard for the Duty To Disclose Information in Patent Applications” here.

The USPTO summary of the rulemaking is shown below: 

SUMMARY: 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.

The USPTO proposes to amend 37 CFR Sections 1.56 by revising paragraph (b) to read as follows:

Sec.  1.56  Duty to disclose information material to patentability.

* * * * *    (b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., ------ F.3d ------ (Fed. Cir. 2011). Information is material to patentability under Therasense if:    (1) The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or    (2) The applicant engages in affirmative egregious misconduct before the Office as to the information.

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The USPTO also proposes to amend 37 CFR Section 1.555 is amended by revising paragraph (b) to read as follows:

Sec.  1.555  Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.

* * * * *    (b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., ------ F.3d ------ (Fed. Cir. 2011). Information is material to patentability under Therasense if:    (1) The Office would not find a claim patentable if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or    (2) The patent owner engages in affirmative egregious misconduct before the Office as to the information.

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DATES: Any written comments on the propose changes must be received on or before September 19, 2011 to ensure consideration. No public hearing will be held.