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74 Journal of the Patent and Trademark Office Society 257 (1992)


This article discusses Rule 56 of the Patent and Trademark Office. Part II discusses changes from the old to the new Rule 56, and examines the former’s relationship to the law of inequitable conduct. Part III elaborates on the current status of the PTO’s rulemaking efforts, and Part IV is focused on the new Rule under the APA. Parts V and VI are about new Rule 56 as a hortatory statement and common-law jurisprudential limitations, respectively. The author ultimately concludes that the PTO could have chosen to approach the Federal Circuit as an amicus without a prior rulemaking proceeding. That choice might have allowed the PTO to act more quickly than the almost three years it has taken to reach this stage in the rulemaking process. If so, the PTO might have substantially changed the law of inequitable conduct already.