Publications
Education Series - Number two: Inequitable conduct and other nasties
| Date: | 13 October 2010 |
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| Author: | Mark Wakeham |
Executive Summary:
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Patent applicants filing in the US must bring all matters of possible relevance to the attention of the patent office.
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Patent applicants must prepare and file an "Information Disclosure Statement"; an IDS, which should contain all prior art known to be relevant by the applicant or their agents.
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The applicant's duty to fully disclose and be truthful in every correspondence with the USPTO has three key arms: Materiality, Disclosure and Intent.
Recent developments and some punishing decisions have focused attention on the issue of duty of care and the broader doctrine of inequitable conduct before the USPTO.
Patent applicants filing in the US are immediately and constantly reminded by their patent attorneys and US associates of their obligations to bring all matters of possible relevance to the attention of the patent office.
Patent applicants filing in the US are immediately and constantly reminded by their patent attorneys and US associates of their obligations to bring all matters of possible relevance to the attention of the patent office.
One of the first steps upon filing a patent application in the US is to prepare and file an “Information Disclosure Statement”; an IDS. The IDS should contain all the prior art known to be relevant by the applicant or their agents. The purpose of the IDS is to alert the patent office to relevant prior art which can be used to build on the patent office’s own searching of prior art. The provision of prior art information is an ongoing obligation and a fresh IDS should be filed each time new prior art comes to the attention of the applicant or their patent attorneys.
If the applicant’s intention is to secure sound patent rights, the open provision of all known prior art will, quite apart from the applicant’s obligations, assist the patent office in determining allowance and granting a patent having given full regard to the issue of key importance in a patent, “is it new?”. In the process of prosecuting a patent application, many applicants will have experienced the frustration and delays of responding to a vigorous examiner’s objections; however, the temptation to withhold relevant new prior art should be resisted, even if this happens after securing allowance. In our experience, alerting the examiner to relevant prior art after they have issued a notice of allowance does not automatically tempt the examiner to retract the notice of allowance.
Focusing on the subject of this article, the US patent office can apply very harsh penalties for any breach of an applicants obligations to provide a full and open disclosure of “any relevant material”. That is, all information relevant to the patentability of the invention. Moreover, counterclaims of inequitable conduct are being raised more and more frequently in response to allegations of infringement. So, the issue of inequitable conduct extends throughout the life of the patent from the day of filing to the day of ceasing.
Whilst the failure to disclose a piece of damaging prior art that would invalidate a patent is clearly an example of such inequitable conduct before the USPTO; of interest and concern is the very broad definition of what constitutes relevant material, and relevant to what?
It appears that the scope of what materials constitute relevant and relevant to what are very broad indeed. Possible issues relevant to patentability include at least the following: Utility, Novelty, Non Obviousness and Adequate Disclosure. However the doctrine of inequitable conduct is broad enough to extend the applicant’s duty to fully disclose and be truthful in every correspondence with the USPTO and has three key arms:
1) Materiality requires that any information relevant to the patentability of the claimed invention be disclosed, even if such material would merely establish a prima facie case of invalidity that may be rebutted (it is up to the USPTO to decide if the information renders a claim invalid, not the applicant).
For example, it seems that the applicant is obliged to advise the patent office if an application under examination has a divisional also under examination and the content and nature of any examination reports to issue on such a divisional. Failure to disclose this can be deemed inequitable conduct, even if the very same examiner is working on both cases!
2) Disclosure requires the provision of relevant material information. Failure to disclose can be by omission or misrepresentation. Misrepresentation being the provision of relevant information; but, misrepresenting some material aspect of that information. For example, providing information on an apparatus with inaccurate submissions regarding the field of use for the apparatus.
So far, the duty to disclose does not suggest the applicant has a duty to actively search, only a duty to disclose what is in the possession of the applicant or their attorney.
3) Intent: Any failure to disclose must be intentional. Negligence is not sufficient to amount to inequitable conduct, but circumstantial evidence can be used to prove intent.
In summary, any applicant for a patent in the US must be prepared to exercise great care in disclosing all possible relevant information to the patent office during prosecution of the application or risk rendering any granted patent (and possibly even related patents) invalid.
Please speak to Mark Wakeham or your contact at FB Rice & Co if you would like further information on this topic.
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