Inequitable conduct

Patent prosecution requires a duty of candor that includes a duty to provide material information to the USPTO during the prosecution of a patent application. This duty applies to patent counsel, inventors, and anybody else substantively involved in the preparation of the application and who is associated with an inventor, assignee, or one who is obligated to assign the patent application. Failure to comply with this duty can result in a finding of inequitable conduct, which can render the application unenforceable. The subject of inequitable conduct will be discussed in detail in Chapter 2. 

In the case of Nilssen et al. v. Osram Sylvania, et al. 504 F.3d 1223 (CAFC 2007), the CAFC upheld the District Court s finding that plaintiff s asserted patents were invalid due to inequitable conduct committed by the patentee during the prosecution of the patents. It is interesting that the patentee had replaced his own legal representatives during the prosecution of the patents to represent himself before the USPTO. In regard to the adequacy of his representation the CAFC panel opined ... 

The duty of disclosure goes beyond just the applicant but includes anybody substantively associated with the filing and/or prosecution of the patent application, such as the inventors, applicants, assignees, and their representatives before the patent office. More will be said about inequitable conduct in section 2.3. 

A patent that is obtained through inequitable conduct can be found nonenforceable, and therefore essentially useless, even if the inequitable conduct applies only to a single claim of that patent. This means the entire patent is contaminated despite the possibility that the inequitable conduct was more limited in nature.69 This sanction has teeth and is enforced vigorously in federal court where patent infringement actions are heard.70... 

A finding of inequitable conduct in the prosecution of one patent can even extend beyond a finding of nonenforceability of the claims of that patent but also may render the applicant s closely related patents unenforceable as well. 

For at least some of these latter reasons, the federal courts have at least espoused a reluctance for too easily finding inequitable conduct, but a quick glance at some of... 

It is interesting that the burden ends after the actual issuing of the patent. So for example, if you realize after your patent issues that you forgot to submit what was an important reference, it is too late to undo the wrong committed—inequitable conduct cannot be undone once the patent is issued. 

To better appreciate the standard by which inequitable conduct is measured, let s review an actual recent court opinion, Bristol-Myers Squibb Company v. Rhone-Poulenc Rorer, Inc.,1% where this issue was heard. This case serves to explain how materiality and intent are inextricably related. Perhaps less abstractly, it will also show why it is important for the scientists to pay close attention to what they publish as well as to documents that they are asked to review.79 This decision arose from an appeal from theU.S. District Court for the Southern District of New York (D-SDNY), which held the Rhone-Poulenc Rorer (RPR) patent relating to methods of preparing Taxol (hereinafter referred to by its generic name paclitaxel) as well as claiming key intermediates in the paclitaxel synthesis to be unenforceable due to inequitable conduct. A brief review of the facts of the case is presented next. 

The primary mistake for RPR was that the French patent agent did not send the U.S. attorney prosecuting the case the JACS reference. Since intent to deceive is a basic requirement of a finding of inequitable conduct, then we need to take into account the entire context of the French agent s actions to help glean that... 

The CAFC further explained that their earlier decision in Molins also pertained to an affirmation of inequitable conduct, notwithstanding that the withheld reference was later cited in a reexamination and the claims were allowed to issue. ... 

As we shall soon see in the case of Frank s, supra, even though a correction to such a patent can be made under 256, a finding of inequitable conduct can still invalidate a patent. 

I]t was the Vincents who sought a patent on the invention, regardless of whose invention it was. Thus, their inequitable conduct during prosecution of the application leading to the patent renders the patent unenforceable, just as the conduct of an attorney who participates in the prosecution of a patent application may render a patent unenforceable. 

We have explained that if unenforceable due to inequitable conduct, a patent may not be enforced even by innocent co-inventors. One bad apple spoils the entire barrel [emphasis added]. Misdeeds of co-inventors, or even a patent attorney, can affect the property rights of an otherwise innocent individual. 22... 

From the decision in Frank s, its clear that even when inventorship might be correctable under 256, the issue of inequitable conduct may be dispositive where the court finds deceptive intent. 

Even when 256 can be meaningfully applied (e.g., no inequitable conduct rendering the patent unenforceable), it does not operate automatically, and thus a patent does not avoid invalidation simply because it might be corrected it must be corrected.23... 

Leaving an inventor off is material because it results in an invalid patent. The intent was shown, at least in part, by the clear financial incentive the Vincent brothers had for leaving Weiner off. As you will recall, materiality and intent together make up inequitable conduct. 

Failure to meet the best mode requirement results in the invalidation for the one or more claims that the inventor s best mode was not adequately provided. The failure to provide the best mode can also result in the invalidation of the entire patent if the best mode was withheld with an intention to deceive (i.e. a finding of inequitable conduct renders the entire patent nonforceable). 

The challenger may also assert that the patentee acted improperly before the PTO in obtaining the patent. This inequitable conduct or fraud defense is raised in many patent infringement suits. The process of obtaining a patent is an ex parte proceeding between the applicant and the PTO. Because representations made by the applicant are generally accepted at face value, the courts have established a relatively high standard of candor and... 

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