The PTO’s Role (none) in Defining the Elements of Unenforceability.

In a comment below, someone asserted that the PTO has tried to define the elements of inequitable conduct.  I wrote an article about this issue, with my (now fellow lawyer) Seth Trimble.  It is here (I hope already available).  Here’s the intro:


In 1992, the patent office amended a federal regulation known as Rule 1.56.[1] The amendment require less disclosure of patent applicants than had been required by the federal courts’ interpretation of the prior version of Rule 1.56, as well as less than had been required by courts in determining enforceability of a patent.  Thus, since 1992, the PTO has required less disclosure under Rule 1.56 than courts have long required to obtain an enforceable patent. This article addresses the tremendous and unnecessary confusion that has arisen from that amendment.

Although our analysis turns on principles of statutory construction and separation of powers, the impact of our conclusion is practical and important.  Those who prosecute applications need to disclose more broadly than is required by Rule 1.56 to best serve their clients. Those who litigate inequitable conduct claims should not rely on the narrow definition of materiality in Rule 1.56.  The two definitions of “materiality” are distinct: one applies during patent examination, and the other during litigation.   A change in the meaning of one does not mandate a change in the other and, most pertinent here, a regulatory change by the PTO cannot mandate a change in the substantive standard applied to determine enforceability.

[1]     37 C.F.R. 1.56.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

21 thoughts on “The PTO’s Role (none) in Defining the Elements of Unenforceability.

  1. 4

    Many moons ago, when I worked for a search firm, one of our cheap deals was to provide the six best references from the best subclass for a bargain basement price. The searcher may not be the best person legally to pick them, but they are best placed for time, as they have to look at all the references in the field of search anyway. If the PTO set a limit, the attorney/agent could commission a search asking for that number of results, which is certainly attainable.

    Where all this goes to heck in a handbasket, of course, is where references become known in some other way. Then we are back to the same old problem, if something is material you have to disclose it, but what is or isn’t material?

    1. 4.1

      Therasense reduced “materiality” some, but I gotta tell you if you read the CAFC cases post-Therasense, materiality is applied a little bit loosely. (There’s also a number of Rule 36 affirmances of inequitable conduct findings that mask the slippage back to a broader standard.)

      1. 4.1.1

        David, I still think the focus has to be on whether the applicant filed and prosecuted claims, or made arguments, that are inconsistent with art he was aware of but of which the patent office was not made aware. For example, if the art fails to disclose that a particular circuit does not have feature X, but you are aware of a piece of prior art in a relevant art that discloses circuitry that does have that feature, then you have committed inequitable conduct because of the “misrepresentation,” not because of the failure to disclose.


          You can look at that either way, I suppose, but it still has to be material under Therasense (or close enough) or “affirmative egregious misconduct.”

    1. 3.1

      Professor, it seems odd that that Manbeck said that the ’92 rules were intended to alter the rules for materiality — for Office purposes. He changed the rules hoping to stem the flood of largely irrelevant and cummulative references and to reduce the number of charges of inequitable conduct. Now just how could he have done that if the Federal Circuit didn’t follow his lead?

      Manbeck or some PTO official, IIRC, openly stated at the AIPLA annual meeting or was it the IPO (I was there) that it was his intent to stem the tide inequitable conduct charges that were directly linked to violations of Rule 56. We went home from that meeting with a view that the PTO was in control. It turned out, it was not.

  2. 2

    Anon, bull.

    The PTO can demand that the applicant not waste its time or pollute the record.

    Just the other day in that oral argument we were discussing, the Court came down hard on an attorney who festooned the record with 10 or 15 printed volumes of the record, IIRC, that the court made sure the attorney understood simply wasted the courts time. He had to apologize.

    1. 2.1

      As we are wrapping around now, you have caught yourself trying to argue both sides of the situation.

      At Post 2, you say the Office can limit, but at you flat out contradict yourself with the opposite stand.

      Please make up your mind as to what you want to argue.

  3. 1

    David, the article is not available yet, as we all know, rule 56 materiality was initially adopted by the courts for inequitable conduct purposes. The low level of materiality lead to unintended consequences that Manbeck tried to fix in ’92. He changed rule 56, but that had no effect on the law, leading to two different definitions of materiality, one PTO and one Court.

    It remains clear that the PTO needs to stop trying to legislated materiality for inequitable conduct purposes. Its rules do not control, but confuse. The PTO needs to repeal rule 56 and to limit the number of references disclosed to some very small number. The duty is on the applicant to file claims that define over the art, not to supply references to the examiners. At some point in time, things got crazy and backwards and no commissioner has had the guts to cut the Gordian knot.

    1. 1.1


      You keep on throwing out there this notion of limiting references.

      I cannot make any sense as to why you would be so hard line about that.

      Care to add some reasoning?

      1. 1.1.1

        The purpose for disclosing references is to educate the examiner on background art. Nothing more. The disclosures need to be limited because there is no legitimate reason to occupy the examiner’s time with more.


          Sorry Ned, but you are wrong yet again.

          The purpose of disclosing reference is NOT only to educate the examiner on background art.

          And you are wrong as well on the limitation factor. You seem to think that the applicant has a right to control what the examiner may or may not consider to be relevant. It is NOT the applicant’s job to weigh the references and make that determination. Period. You cross the line and you seem quite oblivious to doing so. I do not think that you understand yet what the Taffas case brought about such a sharp reaction, and why it matters so very much that vacatur was denied in that case and that the Office is very much constrained by the district court decision.

          Examination is the sole providence of the Office. You would implicitly switch at least some of that with a limitation on references as such a limitation would have the effective result of making applicants examiners in at least going through and examining the prior art to be made of record in a case. There is in fact no legitimate reason to limit what is provided to an examiner. Time? Please spare me. Quality examination is done on the merits. It is not done on the clock.


            anon, The purpose of disclosing reference is NOT only to educate the examiner on background art.

            I’m not quite understanding your meaning here anon. What I hear you say is that you feel free to claim an invention which you know to be in the prior art provided you disclosed a reference to the patent office?

            Personally, I think it is my job as a patent attorney to assured of the claims I file are patentable over the art of which I am aware before I filed a patent application. I think any other practice is unethical. I cannot understand why this is not apparent on its face.

            The original reason for submitting references the patent office was to give them background information on the invention. Some professors argued not the disclose references at all because it would bias the search. But no one ever suggested to me when I learned how to practice patent law that the purpose of disclosing references was to launder the fact that I was knowingly claiming the prior art. But that is what you seem to be suggesting here anon. If it is not, please explain yourself.


              Why in the world would you take that twist, Ned?

              There is nothing at all – anywhere – in my post that would lead to such a thought as “eel free to claim an invention which you know to be in the prior art provided you disclosed a reference to the patent office

              That is simply and utterly preposterous. That has to be the most inane strawman I have ever seen attempted.

              No one is saying anything even remotely along that line.

              You have (still) not explained any rational point as to why a limit should be in place. You are creating an artificial constraint. If there are 40 pieces or 500 pieces, the pieces speak for themselves and – critically – it is not the applicant’s jo to make any such patentable weight decisions as that is soley the job of the examiner.


              anon, you have to be fricken out of your mind. The disclosure of references beyond 10 only wastes the examiner’s time and hide anything really important. Massive disclosures are non informative.

              If the patent attorney is doing his job, he need disclose nothing. NADA. Zilch.



              You still (badly) miss the point that it is not up to the applicant to determine what is and what is not important to the examiner for the examiner to review.

              Your completely arbitrary choice of “10” is sheer nonsense.

              We have on a separate side note discussed your “view” of including things (prior art) in a patent application. That is, of course, your personal choice, but I explained carefully why that choice is more problematic than beneficial.

              In any point to that separate conversation, your notion of forcing others to follow your ‘preference,’ cannot stand. You ignore reality (once again) by trying to think that “your way” is the only right way.


              anon, you somehow think that the patent office can tell the applicant what it has to disclose in terms of prior art. It doesn’t have that power.


              That’s excessively odd Ned, as it appears that you want the very thing you accuse me of.

              You do realize that the the notion of a limit as you proscribe has that very effect, right? According to you, the Office by rule would be able to artificially cap at a maximum of ten the items an applicant can share.

              Do you realize how bizarre your entire conversation has been? You continue to fail to address the points I raise, and you seem to confuse yourself as to your own reasoning.


              anon, the whole point of a cap is to stop the flood of largely irrelevant, cumulative effluvium that pollutes file wrappers and unnecessarily fells forests when it is necessary to obtain copies of file wrappers.


              Your “entire point” then is merely a matter of convenience for others and has ZERO to do with the applicant and the applicant’s ability to share whatever it wants.

              Sorry Ned – your latest attempt only even more makes it clear that your argument cannot stand.

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