On the heels of the Federal Circuit’s en banc decision in Therasense, the USPTO has announced that it will be issuing guidance “related to the prior art and information [applicants] must disclose to the Office in view of Therasense.”
According to the USPTO’s press release:
We are now studying the potential impact of Therasense . . . on Office practice, and we expect to soon issue guidance to applicants regarding the materials they must submit to the Office under their duty of disclosure.
As I noted in my case summary, the Therasense decision expressly rejected the “materiality” standard set forth in USPTO Rule 56 (37 CFR § 1.56). Thus, the USPTO may revoke or revise this rule, although new provisions might be promulgated through the notice and comment process. Several provisions of MPEP Chapter 2000 are based on Rule 56, and may be revised as well.
It will be interesting to see whether the USPTO conforms its rules and guidance to the court’s decision, or tries to maintain a higher duty of disclosure.
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