Inequitable conduct
Encyclopedia
In United States patent law
, inequitable conduct is a defense to allegations of patent infringement
. Even in the instance that a patent is valid and infringed, the court ruling on infringement may exercise its equitable discretion not to enforce the patent if the patentee has engaged in inequitable conduct.
Inequitable conduct is found when a patent applicant breaches his duty of candor and good faith to the US Patent and Trademark Office
while applying for their patent. This breach can include: (a) failure to submit material prior art
known by the applicant; (b) failure to explain references in a foreign language or submit pre-existing full or partial translations of the references; (c) misstatements of fact, including misstatements in affidavits concerning patentability
; and (d) mis-description of inventorship
.
The party asking the court to decline to enforce the patent, usually the alleged infringer
, bears the burden of proving inequitable conduct to the court. This party must show by clear and convincing evidence that the patentee intentionally "withheld or misrepresented" information, and that the information was "material". Proven inequitable conduct in any claim can lead the entire patent
to be unenforceable.
in a related case. This case has caused patent applicants to be overly inclusive.
However, in 2009 case of Exergen Corp. v. Wal-Mart Stores Inc. and S.A.A.T. Systems, SAAT has claimed that Exergen was aware of two earlier patents that it did not cite to the examiner during prosecution. The district court denied SAAT’s motion to add inequitable conduct as a defense, however, because its allegations were not specific enough to meet the particularity requirement. The Federal Circuit Court of Appeals upheld this ruling, and said that such allegations must specify who was guilty of the inequitable conduct, what precisely that person knowingly withheld or misstated to the PTO, and how the omission or misstatement affected the patentability of individual claims. The court said that inequitable conduct is not a “magic incantation to be asserted against every patentee” by a “mere showing that art or information having some degree of materiality was not disclosed”.
As a further development, in 2011 case of Therasense, Inc. v. Becton, Dickinson and Co, the same Federal Circuit Court of Appeals, sitting en banc
, has limited this defense to when the patent-holders acts were related directly to the patent, and when patent holder has had deceitful intent.
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, inequitable conduct is a defense to allegations of patent infringement
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
. Even in the instance that a patent is valid and infringed, the court ruling on infringement may exercise its equitable discretion not to enforce the patent if the patentee has engaged in inequitable conduct.
Inequitable conduct is found when a patent applicant breaches his duty of candor and good faith to the US Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
while applying for their patent. This breach can include: (a) failure to submit material prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
known by the applicant; (b) failure to explain references in a foreign language or submit pre-existing full or partial translations of the references; (c) misstatements of fact, including misstatements in affidavits concerning patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
; and (d) mis-description of inventorship
Inventor (patent)
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention and its case law, no explicit, accurate definition of who exactly is an...
.
The party asking the court to decline to enforce the patent, usually the alleged infringer
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
, bears the burden of proving inequitable conduct to the court. This party must show by clear and convincing evidence that the patentee intentionally "withheld or misrepresented" information, and that the information was "material". Proven inequitable conduct in any claim can lead the entire patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
to be unenforceable.
Duty of candor
Rule 56 of the U.S. Patent and Trademark Office explains that patents are "affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability." Accordingly, each individual person "associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability."History and landmark court cases
In 2007 case of McKesson v. Bridge Medical , Federal Circuit Court of Appeals have found inequitable conduct because a patent attorney had failed to provide to one of patent examiners information from an office actionOffice action
An office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark...
in a related case. This case has caused patent applicants to be overly inclusive.
However, in 2009 case of Exergen Corp. v. Wal-Mart Stores Inc. and S.A.A.T. Systems, SAAT has claimed that Exergen was aware of two earlier patents that it did not cite to the examiner during prosecution. The district court denied SAAT’s motion to add inequitable conduct as a defense, however, because its allegations were not specific enough to meet the particularity requirement. The Federal Circuit Court of Appeals upheld this ruling, and said that such allegations must specify who was guilty of the inequitable conduct, what precisely that person knowingly withheld or misstated to the PTO, and how the omission or misstatement affected the patentability of individual claims. The court said that inequitable conduct is not a “magic incantation to be asserted against every patentee” by a “mere showing that art or information having some degree of materiality was not disclosed”.
As a further development, in 2011 case of Therasense, Inc. v. Becton, Dickinson and Co, the same Federal Circuit Court of Appeals, sitting en banc
En banc
En banc, in banc, in banco or in bank is a French term used to refer to the hearing of a legal case where all judges of a court will hear the case , rather than a panel of them. It is often used for unusually complex cases or cases considered to be of greater importance...
, has limited this defense to when the patent-holders acts were related directly to the patent, and when patent holder has had deceitful intent.