Patent Law Practice Center

Litigation Issues Relevant To Patent Prosecution: The Defense of Inequitable Conduct

Jeanne Curtis, a Partner at Ropes & Gray, sent in this article she wrote with her colleagues discussing the defense of inequitable conduct and the recent Federal Circuit holdings pertaining to the doctrine.  Curtis will speaking at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on June 17, 2011. The following is an excerpt from the article:

I. INTRODUCTION

All patent applicants have a duty to prosecute their applications with “candor and good faith.” This duty of candor also extends beyond mere applicants, further covering individuals who are “substantively involved in preparation or prosecution of the application,” including named inventors and attorneys or agents who help prepare or prosecute the application. The duty does not, however, apply to corporations or institutions unless an individual within the corporation or institution was substantively involved in prosecuting the application.

Compliance with the duty of candor is of paramount importance during prosecution of an application. Any failure to comply with the duty exposes an applicant to a potential finding of inequitable conduct, which carries with it a host of undesirable and potentially expensive consequences. The Federal Circuit has articulated that “[a] patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information to the PTO during prosecution.” (more…)