You Mean I Have to Tell Them What! Your Duty to Disclose Under Rule 56

In patent law there is a very important rule, “rule 56” as we colloquially refer to it.  Technically this rule may be found at Title 37 of the Code of Federal Regulations, section 1.56, i.e. 37 CFR section 1.56.  Under this rule, the inventor, the applicant, and the patent attorney all have a duty to disclose information that may be material to the patentability of an invention claimed in a patent application.  The disclosure of such information must be made to the United States Patent and Trademark Office (USPTO).

In practice, this rule generally comes up when you the client orders a search.  Per this rule, the results of any search might have to be disclosed to the USPTO.  So if you order a search, and the search turns up a particularly troubling prior art reference, that could render your patent application either novel or non-obvious – you have a duty to disclose this potentially damaging prior art reference to the USPTO.  Your attorney has this duty as well.

If you and/or attorney fails to make this disclosure, such action, or such inaction, may be grounds for invalidating any patent which may issue from that patent application.  Essentially the breach of that duty may constitute perpetuating a fraud upon the USPTO.  For your attorney, such a breach may constitute legal malpractice and be grounds for discipline.  So the rule is a big deal.

Knowing this ahead of time then allows you an additional consideration to consider before you order a search from your attorney.  It is within your right to remain ignorant and not conduct a search, if you do not know about a prior art reference, then you certainly do not have to disclose what you do not know.  So that is an option.

However, we think the better option is to go ahead and order the search.  If the results might come up potentially damaging, then do not file the patent application.  And if the results turn out somewhere in the gray area – as is often the case – then your attorney can at least anticipate potential patentability issues and draft the patent application with those issues in mind.

From a policy perspective, we think this rule is problematic.  Because if you the client are aware of the rule, and you order a search – then you and your attorney might end up in conflict.  Because the search might generate harmful prior art that the attorney has to disclose, but you not being aware of this duty might order your attorney not to make that disclosure.  Now the attorney is in conflict because he owes you a duty of loyalty, but also owes this potentially conflicting duty to the USPTO.  So the best practice is for your attorney to make you aware of this rule before conducting a search.

And lastly, in practice, the way we generally satisfy our “rule 56” duty to disclose is by supplying one or more “IDS” statements to the USPTO.  IDS stands for “Information Disclosure Statement” and it’s a USPTO pdf form where one simply lists out the prior art references.  If the prior art reference is foreign or non-patent related, then should also provide a copy of the prior art reference to the USPTO.

As an aside – patent law “rule 56” is not to be confused with “rule 56” of FRCP, of the Federal Rules of Civil Procedure which addresses summary judgment in federal civil litigation matters.