Inequitable conduct

In United States patent law, patent holders must go to the federal courts to enforce their patent rights. Even if the patent is valid and infringed, these courts may exercise their equitable discretion not to enforce the patent if the patentee has engaged in inequitable conduct. The patent applicant has a duty of candor and good faith to the US Patent and Trademark Office when applying for their patent. Breach of this duty constitutes inequitable conduct, which includes the following: (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 material information.Fact|date=January 2008 Proven inequitable conduct in any claim can lead the entire patent to be unenforceable.

The law regarding inequitable conduct is currently evolving. [ See "McKesson Information Solutions, Inc. v. Bridge Medical, Inc" (2007) at http://www.fedcir.gov/opinions/06-1517.pdf. ] vague

Duty of candor

McKesson

McKesson Information Solutions, Inc. v. Bridge Medical, IncFailure to disclose material rejections and allowances in related applications was inequitable conduct. With respect to the rejections asserted in a related application, the CAFC stated:The term “information” is intended to be all encompassing . . . . [Section 1.56(a)] is not limited to information which would render the claims unpatentable, but extends to any information “where there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent.”In light of this broad understanding of information, there is “no doubt that material rejections in co-pending applications fall squarely within the duty of candor.”

Marlow

Marlow Industries, Inc. v. Igloo Products Corp. [Marlow Industries, Inc. v. Igloo Products Corp., 2002 WL 485698 (N.D. Tex. 2002] In this case, Marlow sued Igloo for infringement of a patent covering picnic boxes. During the course of litigation, the court construed the claims of Marlow's patent to require that the "picnic box is capable of both heating and cooling air in the food compartment." Marlow thereafter in re-examination proceedings before the PTO attempted to expand the breadth of the claims to cover picnic boxes that could heat or cool.

Igloo argued that Marlow failed to disclose to the PTO (during re-examination) various decisions of the court in the infringement case, including the court's memorandum opinion and order. Marlow acknowledged its failure to disclose the documents to the PTO, but argued that the documents were not material to patentability. The court stated that "material information is not limited to prior art, or to the initial examination of a patent [,] " and held that a reasonable examiner would have found the court's order material to the proper scope of the patent's claims. The court further suggested that the applicant had a duty to notify the PTO of the existence and nature of any allegation of invalidity, fraud or inequitable conduct relating to a patent or patent application and to any related litigation materials.

References

Further reading

* [http://www.fedcir.gov/opinions/06-1517.pdf McKesson v. Bridge Medical]

See also

* Patent misuse