Legal News

Patent?s ?Inequitable Conduct Doctrine?: Death Penalty for Minor Conduct?

By Dan Slater

The ‘inequitable conduct doctrine’ — which allows federal judges to void patents upon a finding that a company deceived the PTO to get the patent — has led to a heated battle in Congress, pitting brand-name pharma companies against generic drug-makers and consumer groups. (Here’s the NYT story.)

Brand-name drug companies are reportedly urging Congress to eliminate the penalty — or to curtail it as proposed under a comprehensive patent bill passed by the House that would make it harder to prove inequitable conduct. According to the NYT, senators are haggling over a companion bill, approved by the Senate Judiciary Committee, and hope to take it to the floor this summer.

Eli Lilly’s GC, Robert A. Armitage, told the NYT that the current inequitable conduct doctrine “is like imposing the death penalty for relatively minor acts of misconduct.”

But Debra S. Barrett, a vice president of Teva Pharmaceutical, a generic drug-maker, said the proposed changes to the law “would make it easier for [brand name drug makers] to cheat and get away with it, easier for them to defend their patents and more difficult for us to get generic products onto the market in a timely way.”

In the last 15 years, the United States Court of Appeals for the Federal Circuit, has reportedly affirmed findings of inequitable conduct in at least 40 cases, including 14 that involved pharma or health care products — finding that drug makers have knowingly submitted false statements to the PTO, inaccurately described experiments and concealed information that contradicted their claims. Similar findings have been issued by federal district judges in an unknown number of cases that were not appealed.

Loyal LB’ers, we know there’s a rich patent constituency among you. Would curtailing the inequitable conduct doctrine lead to erroneously-granted patents, as the generics suggest? Or would doing so simply streamline the application process and result in less litigation?

Full post as published by Law Blog - WSJ.com on April 30, 2008 (boomark / email).