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The Duty of Disclosure in the Post-Therasense Landscape

MaryAnne Armstrong, Ph.D., for Pharmaceutical Patent Analyst 2013 2:2,149-151

In Greek mythology the Hydra was a multi-headed creature, with the singular attribute that if one head was cut off two heads would grow. Today a hydra is “a persistent or multifaceted problem that cannot be eradicated by a single effort” [101]. Section 37 C.F.R. §1.56 states, in part, that the duty of disclosure “includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section”[1]. Inequitable conduct may be found, and a patent held unenforceable, when information material to patentability is intentionally withheld from the USPTO. Beginning around 10 years ago, US courts created a hydra through several decisions regarding the duty of disclosure [2–5].

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