Corporate Duty to Disclose?

Query: Now that patent applications are being filed by “applicants” rather than the inventors themselves, will those applicants (i.e., corporate owners) now be bound by the duty of disclosure?

37 C.F.R. 1.56:

(a) . . . Each individual associated with the filing and prosecution of a patent application 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 as defined in this section. . . .

(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.

If we are strictly following the rule, the basic question is whether a corporate owner counts as a “person” under (c)(3).

 

16 thoughts on “Corporate Duty to Disclose?

  1. 5

    Long ago both the USPTO and the Federal Circuit rejected imputed knowledge which rejects corporate entities as “persons substantively involved.” So, the answer is: no.

    1. 5.1

      Do you have a cite, Dave?

      Also, I am not sure that “imputed knowledge” covers the full gamut of what the juristic person involved may be charged with. I’d like to see the cite to see if a natural distinction arises and whether the “imputed” element is distracting you from the larger view.

  2. 4

    Seems like a hypertechnical question of no consequence. The PTO has no way to reliably detect violations of the duty of candor under Rule 56, so the rule is largely meaningless in front of the Office. The real enforcement falls on the courts in the form of the “inequitable conduct” doctrine, but that doctrine is largely toothless after Therasense, as it now requires a showing of intent greater than the level needed to secure a conviction for second degree murder or criminal espionage. It’s a ridiculous situation, but the Federal Circuit has to protect the patent prosecution guild somehow…

    Nevertheless, in those rare cases where inequitable conduct is found, courts will apply the doctrine to impute to anyone affiliated with the applicant, including the inventors, their employer, their counsel, consultants hired by the applicant, etc. Because it’s an equitable doctrine, courts have repeatedly said that they’re not confined by the strict language of Rule 56 anyway. So even if a corporate filer was somehow not subject to the rule (a dumb suggestion in its own right), provided that the level of intent is shown, a court will have no hesitation to find the patent unenforceable regardless of Dennis’s myopic reading of the rule.

    1. 4.1

      LR, there have been two Fed. Cir. IC decisions since Therasense that have considerably revived IC.

  3. 3

    Forgive me if this is a dumb question – but what difference does it really make to patentability?

    1. 3.1

      IRK, determining IC may well include the issue of whether or not the known but undisclosed art or test data or a false affirmative representation to the PTO would have rendered at least one claim unpatentable, and of course a finding of IC renders the whole patent unenforceable.

  4. 2

    “Each individual” in (a) and (c) “Individuals ..within the meaning of this section” including “every other person who is substantively involved in the preparation or prosecution of the application” was intended to make it very clear that the other 40 thousand [or whatever] un-involved employees of the assignee are NOT covered.

    1. 2.1

      Of course that does not mean that the assignee is not responsible for conduct of individuals who are its legal agents, which includes attorneys of the assignee.

  5. 1

    Is this really something new?

    After all, the juristic person (even not being “the applicant”), still fell under the umbrella of “associated with… the prosecution

    I don’t see how adding the fact that the juristic person now has the expanded power of being the party doing the “applying” changes the already incurred duty (to any appreciable difference).

    The pre-AIA 1.56 already captured the corporate owner as a “person.”

    1. 1.1

      Did the cases ignore the “substantially involved” bit (anded with the associated with bit)?

      Does merely employing the inventor automatically make the Corporate fake person “substantially involved” rather than simply peripherally involved in the preparation or prosecution?

      Certainly a corporation is not the inventor, nor an attorney or agent.

      Finally, what juristic fiction masquerades as the purported knowledge of the Corporation and what function of a Corporation will courts conjure up from the dead weight of the ink and paper of the articles of incorporation to serve as a zombified anthropomorphic faculty of “knowing” of information material to patentability? The disparate knowledge of the individual shareholders, officers, directors, employees… etc.? Or something which bears no similarity whatsoever to any kind of knowledge.

      1. 1.1.1

        ANon2,

        I am not certain where you are trying to go with your questions.

        Plainly put, the juristic person of the corporation is completely impacted by both the pre and post 37 CFR 1.56 requirements.

        It matters not at all that the juristic person of a corporation is not an actual person of an actual inventor, attorney, or agent.

        Your raising this point seems to indicate that you do not understand the concept of a juristic person, and any difficulty you may be having appears to be easily traced to the notion itself.

        This includes your additional comment of “serve as a zombified anthropomorphic faculty of “knowing” of ” – again, you appear to not understand the concept of a juristic person. Your reference is inapposite to the meaning of the term. The juristic person IS the conglomeration of all members (real people) of the juristic person.

        1. 1.1.1.1

          Suppose Corp A employs persons X, Y, and Z. Person X is an inventor, Y is an in-house agent/attorney, and Z is a manager in the patent department (not a CEO or director or shareholder of the company). Y and possibly X are substantially involved in the preparation or prosecution of the application, but do not know of any relevant prior art, person Z, by sheer chance does happen know of prior art.

          IS Corp A associated with the filing or prosecution of a patent application? Is it an inventor or an agent or an “other” substantially involved in prosecution? Does it know of the prior art and hence is there a duty to disclose?

          What if we replace Corp A with an Individual sole proprietor (owner of a business) who hires X, Y, and Z in exactly the same way to do the exact same things for his business? Assume the sole proprietor has no direct participation in patent matters of his business, relying solely on the manager.

          Is the individual sole proprietor associated with the filing or prosecution of a patent application? Since he is not an inventor or an agent, is he an “other” “substantially involved in prosecution” even though he isn’t? Can one impute knowledge to this individual sole proprietor by virtue of his employee’s (Z’s) knowledge? Does the duty to disclose by the sole proprietor arise here?

          1. 1.1.1.1.1

            Yet again, Anon2, your “issue” appears to be in that you do not seem to understand the concept of a juristic person.

            The law is clear – and more to the point raised by this thread – has NOT changed (in any appreciable manner) in regards to the AIA and the AIA change to allow a juristic person to now file an application.

            You continue to want to confuse a concept of a real person with the concept of a juristic person. You only are confusing yourself chasing down an “identity” that simply does not exist – a juristic person simply is not a real person. No one has ever contemplated that they are the same, so posing a question that places you in the position of wanting them to be the same is just nonsense from the start.

            Your attempt to “flesh this out” with “replace Corp A with an Individual sole proprietor” only adds to your own confusion (and displays your lack of understanding) of the concept of juristic person.

            No amount of my attempting to help you here WILL help you until you come to grips with the fundamentals of what a juristic person means.

            As I stated directly: The pre-AIA 1.56 already captured the corporate owner as a “person.”

            You seem to have a SEPARATE issue with the concept of “juristic person.”

            I too, have an issue – but my issue does not stem from a lack of understanding what is entailed in the concept. My issue stems from the decisions of (for example) Citizens United that does not recognize some inherent differences between a juristic person and a real person and through that lack of understanding has created a decidedly UNEQUAL playing field of real world effects between what a real person is capable of and what a juristic person is capable of.

            1. 1.1.1.1.1.1

              From your non-answer, I will assume that your answer is that the Sole proprietor and Corp A, although positioned in the exact same business structure will be treated very differently by the law.

              In the present context you seem to take as paramount one’s understanding of what a juristic person is according to currently accepted legal tradition, and dismiss out of hand concrete discussions exploring the propriety and coherence (or lack thereof) of idea of juristic personhood as it is currently accepted.

              Your focus away from investigating fundamentals through concrete examples indicates to me you are not predisposed to discuss what I am interested in.

              Although disappointing, that is perfectly acceptable.

              1. 1.1.1.1.1.1.1

                The answer is there – that you see a “non-answer” only confirms that you lack the fundamental appreciation of what a juristic person is.

                May I recommended that you correct that deficiency and then come back and we can engage on a more meaningful level.

                (and no, the rule of law of 1.56 applies as it does to the parties to whom it applies – again, it is your questions that are askew, and they are askew for an easily seen reason).

                1. (for example, a sole proprietor is NOT in the “exact same business structure as you state – your basic premise is not in line with reality, and thus any answer I give to you will be received by you with you being askew. You need to be ready to hear the answer (which once you understand what I asking you TO understand, will be self-evident)

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