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Inequitable conduct and patent prosecution

U.S. patent law imposes a duty of candor on all associated with the prosecution of applications before the U.S. Patent Office. A breach of this duty can give rise to inequitable conduct, if it is found any individual associated with prosecution of the application omitted material information with the intent to deceive the Patent Office. Inequitable conduct provides an equitable defense to a charge of infringement. Materiality of the omitted information much be such that “but-for” the omission, the patent would not have issued. See Therasense v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). Therasense raised the then-existing standard for finding inequitable conduct. While this is a high standard, inequitable conduct has been found in post-Therasense cases.

Inequitable conduct remains a defense to infringement. In Apotex, Inc. v. UCB, Inc., August 2014, the Federal Circuit affirmed the finding of inequitable conduct by the district court, holding that the inventor engaged in "but-for" material misconduct, and that there was clear and convincing evidence that the inventor intended to deceive the USPTO. The conduct of the inventor and applicant included misrepresentation in the application about the prior art, misrepresentations about the prior art commercialized product, and misrepresentations in a third-party declaration submitted to demonstrate patentability of the claimed product.

Those associated with prosecution of a patent application must be on guard to avoid misrepresentations based on reliance on information from an inventor or other person involved in the prosecution of the application, and confirm that information is not withheld, incorrect or incomplete. The applicant and others associated with prosecution should be counseled that the duty of candor requires disclosure of facts and information that may be unfavorable to patentability.

Anyone associated with prosecuting the patent application, including the drafter, inventor, owner and patent practitioner should be careful to avoid misrepresentations in the application and in any communications with the Patent Office. Information that should be cited to the Patent Office, includes, among many items, inventor and applicant publications and press releases, whether published before or after the filing of an application. These documents should be reviewed to ensure that the patent application and arguments for patentability are not inconsistent any published material. If so, the inconsistency should be brought to the attention of the Patent Office. Information not related to patentability also can raise the issue of inequitable conduct. For example, false claims of entitlement to small entity status and false statements in petitions to the Patent Office can raise the issue.

In the past, once a patent issued, there was no “cure” for inequitable conduct. The America Invents Act provides an opportunity after allowance to “cure” inequitable the AIA provides a supplemental examination in which the Patent Office can consider information either previously withheld or misrepresented. Since such provision is new, neither the effectiveness nor consequence of such “cure” has not been tested. Hence, it is to be forthcoming with information during pendency of an application to avoid any conduct that subsequently could be construed as material and evidencing an intent to deceive the Patent Office.

-Submitted by Stephanie Seidman, McKenna Long & Aldridge LLP.

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