What is inequitable conduct in patent prosecution?

Inequitable conduct, often called “fraud upon the patent office,” generally means that in trying to obtain a patent, the applicant was not honest with the patent office and failed to disclose prior art or other information known by the applicant that was material to the patentability of his/her invention.  Patent prosecution rules include a Duty of Candor, which requires the applicant and his/her representatives to disclose material information to the USPTO during prosecution of the patent application.  Should an applicant withhold material information and thus commit inequitable conduct, the result is that the patent would be deemed unenforceable.  This is an equitable doctrine.  It means that even if the patent is valid, the applicant would be precluded from enforcing it against infringers due to the fraud upon the patent office.  Inequitable conduct is a defense sometimes raised to allegations of infringement.

Recent Federal Circuit case law (the court of appeals for patent cases) has made it more difficult to prove inequitable conduct.  Specifically, “specific intent” is not required for a finding of this type of fraud.  This means that it must be shown by clear and convincing evidence that the applicant knew of the information, knew that the information was material, and withheld the information with an intent to deceive the patent office.  The earlier test allowed intent to be inferred based upon the materiality of the reference.  This “specific intent” requirement makes it more difficult to prove inequitable conduct. 

The court has also recently created a heightened test for proving materiality.  The court has employed a “but for” standard for proving materiality.  The test requires a showing that the patent would not have issued but for the alleged material act.  For a prior art reference, the showing requires that the patent claims would not have been allowed by the patent examiner had the examiner considered the withheld reference during prosecution.    

No longer may inequitable conduct be based upon a mere failure to disclose prior art to the USPTO, where intent may be inferred from a reference that is on point to the patentability of the pending claims.  This trend to heighten the standards of proof required for a showing of inequitable conduct aligns with the idea that the courts do not really like this defense and believe that it should be reserved for instances of egregious conduct.  Still, it is advisable for an inventor to disclose all prior art and information of which the applicant is aware which may be material to the patentability of his/her application.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866-936-7447 (International Toll Free).

Comments

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Still, it is advisable for an inventor to disclose all prior art and information of which the applicant is aware which may be material to the patentability of his/her application.