Inequitable Conduct

How do I defend allegations of patent infringement? An attorney may choose to argue that the infringed patent is invalid. However, an alternative strategy may entail a claim of inequitable conduct. A successful claim of inequitable conduct renders a patent unenforceable because the court will exercise its power of equitable discretion not to enforce the entire patent because of the patent owner’s inequitable conduct even though every claim meets every requirement of patentability. A breach of a patent applicant’s duty of candor and good faith when applying for a patent is inequitable conduct. The duty of candor has been violated when those individuals substantively involved with preparing and prosecuting the patent application do not disclose to the United States Patent & Trademark Office (USPTO) information that is known and material to the examination of the patent application.

The elements of inequitable conduct are: (1) an individual associated with the filing and prosecution of a patent application made an affirmative misrepresentation of a material fact, failed to disclose material information, or submitted false material information; and (2) the individual did so with a specific intent to deceive the PTO.

With respect to the materiality element, information is material when a reasonable patent examiner would consider the information important in deciding whether to allow the application to issue as a patent. Sources of the material information may include other patents, publications, or journals etc.  Materiality does not presume intent which is a separate element of the inequitable conduct determination. However, materiality does influence the intent determination because the more material the omission or the misrepresentation is, the lower the level of intent is required to establish inequitable conduct, and vice versa.

The intent element of the inequitable conduct determination requires a demonstration that that the patent applicant had the specific intent to mislead or deceive the USPTO. Furthermore, in a case involving nondisclosure of information, clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference. A mere showing that art or information having some degree of materiality was not disclosed is not enough for a showing of inequitable conduct.