Inequitable Conduct As An Affirmative Defense


Robert Faber, partner at Ostrolenk and Faber LLP and Practice Center Contributor, recently passed along a great article called Prosecution Ethics   he wrote for the upcoming PLI program: Advanced Patent Prosecution Workshop: Claim Drafting and Amendment Writing.  In the article, Faber discusses the Patent and Trademark Office Duty of Disclosure Rules and in partiuclar what types of failure to provide different forms of information to PTO Examiners have been found by Courts to be inequitable conduct.  Faber explains that the duty of candor and good faith is breached when an affirmative misrepresentation of material fact, faliure to disclose material information or submission of false information occurs.  He then discusses particular cases when the Court has found inequitable conduct.

I caught up with Faber and asked him about one particular inequitable conduct allegation that has recently been getting more attention – “Burying” (submitting information material to an Examiner’s examination of a patent application where that submission includes a large quantity of other less relevant material).  The Federal Circuit and the District Courts have struggled with whether burying alone can be a ground for inequitable conduct.  (See the recent article in Law 360, “Is Burying A Material Reference Inequitable Conduct?“)  I asked Faber whether or not he believes “burying” alone could amount to inequitable conduct?

Here is his response:

The “dumping” of material too voluminous for a typical Examiner to fully consider during the limited time he is given to examine each application is in effect a failure to supply that material information, in my opinion. Those feeling to the contrary say they cannot risk a court later deciding that a reference they omitted to file during examination was material to the examination and that the failure to file it was inequitable conduct. The cost of fighting against such a claim makes it better to overrsupply information during the examination. I don’t accept the contrarian’s rationale, but no one can predict a problem that may arise or its eventual resolution.

Robert Faber will be speaking at the Advanced Patent Prosecution Workshop 2010: Claim Drafting and Amendment Writing on Monday, July 26th in NYC and live on the web.

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One Response to “Inequitable Conduct As An Affirmative Defense”

  1. BBaum says:

    As a litigator, I have seen many cases in which I have strongly suspected that “burying” had taken place during prosecution. However, all things considered, a patentee has a far better chance of defeating an accused infringer’s assertion that a reference was buried than the contrary — the assertion that a reference was not disclosed.

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