USPTO’s Rule 56 “But For-Plus” Proposal

Last week, the USPTO published proposed changes to the materiality standard of  37 CFR §§ 1.56 and 1.555 in response to the Federal Circuit en banc decision in Therasense, Inc. v. Becton, Dickinson & Co.

Impressively, the USPTO has managed to publish the proposed changes in just under two months (since the issuance of the Therasense decision). The initiative to craft such meaningful proposals in such a short time period, as well as the intention to help alleviate the significant duty of disclosure obligations is certainly greatly appreciated by all stakeholders.

In distilling the essence of Therasense down to succinct language for rule making purposes, the USPTO has promulgated a “but for-plus” test.

Is this test appropriate as currently presented, or does it require a bit more seasoning? 

The proposed rule is shown below in its entirety. (Rule 1.555 being the same)

§1.56 Duty to Disclose Information Material to Patentability

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(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.

Part (b)(1) above is straight forward enough, (b)(2) on the other hand is a bit more problematic; (b)(2) embodies the “plus” aspect of the proposed “but for-plus” materiality standard.

Historically, the USPTO treated intentional misrepresentations, false and misleading statements under 37 CFR § 11.18(b)(1) as exemplified by MPEP § 410. Whereas, the duty of disclosure was covered by 37 CFR §§ 1.56, 1.555 and 1.933 and dealt with in MPEP § 2000. Affirmative egregious misconduct in the form or false statements or misrepresentations, especially in affidavits or declarations were considered to be inherently material. But such materiality was a result of a violation of the duty of candor and good faith. Whereas the duty of disclosure was confined to acts of omission and given separate treatment.

As can be appreciated, the proposed materiality definition mixes together concepts relating to acts of omission with that of false statements and misrepresentations.

Part (a) of both Rules 56 and 555 serve as a reminder that no patent will be granted or a reexamination certificate issue where fraud on the Office was practiced or attempted. In view of this statement, is it even necessary to define materiality in terms of egregious misconduct?

Tomorrow’s post will discuss the potential impact of the mixing of the duty of candor and good faith with that of the duty of disclosure relative to reexamination practices and the proposed post grant proceedings of the Leahy-Smith America Invents Act.