When representing individual inventors, as well as an institutional assignee, the question of the duty of candor and its scope arises. In particular, large institutions involved in many different products or technologies often wonder if they are obligated to conduct a full review of their various ventures in order to make an appropriate information disclosure statement. Obviously, this would be an onerous duty, and luckily, this is not the law.
In this regard, individuals required to disclose known information pertinent to the prosecution (i.e., having the duty of candor) are only: (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, with the assignee or with anyone to whom there is an obligation to assign the application.
Individuals having a duty of disclosure are limited to those who are "substantively involved in the preparation or prosecution of the application." The duty does not extend to people involved in the prosecution on only an administrative level. Moreover, the duty applies only to individuals, not to organizations. For instance, the duty of disclosure would not apply generally to a corporation, institution or law firm generally, but only to individuals or attorneys within the corporation, institution or law firm substantively involved in the preparation or prosecution of the application. Therefore, there is no “generalized” duty to conduct an internal audit to determine if any information material to the patentability of an application exists within the institutional archive.