Intellectual Property Law

When ?Fudging? Conduct is Inequitable.

By thomason

Many proposals for patent reform legislation suggest changes to the inequitable conduct defense. One proposal is that the defense strictly require information material enough to get the a patent rejected or granted.  Just checking the wrong box on a form would not be material enough.  Withholding or mischaracterizing prior art, or information about a statutory bar, would be enough for a patent to be declared unenforceable. Those notions of patent reform, though, remain simply notions.

Malfeasance, which may be immaterial to a patent having being granted, is now enough to render it unenforceable.  Perhaps Applied Materials v Multimetrixs (N.D. Cal. 7/22/2008) is such a case or controversy. After an inventor to signs a declaration, the PTO rules require no further signature by that inventor (provided he signed a power of attorney).  The Multimetrixs’ inventors did not sign a power, at the outset, and so they continued to sign filings.  After notice of allowance, the application went abandoned.  Before allowance, one of the named inventors had died.  His signature on his inventors’ declaration was original, but forged on filings made after he had died.  An attorney was hired, and he dealt with the abandonment issue. In the later suit, Applied alleged its engineers, not Multimetrixs, were the true inventors. Applied sought a correction of inventorship, and Multimetrixs counterclaimed for infringement.  The judge declared Multimetrixs’ patent unenforceable, but made no declaration about the Applied engineers being the inventors.

Full post as published by ISinIP on July 27, 2008 (boomark / email).