【申請】揭示責任

【申請】揭示責任
揭示責任（Duty to disclose information material to patentability）

要判斷參考文獻是否必須提交給審查委員，其標準在於「material to patentability」，而“material”的標準於1992年以前為“Reasonable Examiner Standard”；因被批評不明確且和專利法其他領域所使用的概念沒有任何關係，所以USPTO於1992年將其改成“prima facie case of unpatentability”，只是這種標準是否會被法院採用尚不確定。

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資料來源

The Federal Circuit stated that “inequitable conduct includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.” The withholding of information must meet thresholds of both materiality and intent. The standard a court should apply in determining whether a reference is “material” is not whether the particular examiner of the application at issue considered the reference to be important, rather, it is that of a “reasonable examiner.” Nor is a reference immaterial simply because the claims are eventually deemed by an examiner to be patentable thereover.

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37 CFR 1.56
Duty to disclose information material to patentability.

(b)
Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1)
It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2)
It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.

A prima facie case of unpatentability 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.

其他文章：（Lessons From Recent Findings of Inequitable Conduct）