Intellectual Property Law

After 15 years of admittedly avoiding the issue, the Federal Circuit last week addressed the question of the materiality standard for a misstatement or omission to the PTO when prosecuting a patent application.  At issue was whether the old standard ? whether a reasonable examiner would have considered such prior art important in deciding to allow the application ? was replaced by the arguably narrow standard of materiality found in the 1992 amendment to Rule 56, and if it was not, does a misstatement that was material under the former but not the latter still rise to the threshold of materiality required for finding inequitable conduct.

In Digital Control v. Charles Machine Works (aka DitchWitch), 05-1128 (Fed. Cir. 2006) the Court reviewed the development of the judicially-created doctrine of inequitable conduct, and the four separate tests for materiality that emerged, including

the objective ?but for? standard, where the misrepresentation was so material that the patent should not have issued; the subjective ?but for? test, where the misrepresentation actually caused the examiner to approve the patent application where he would not have otherwise done so; and the ?but it may have? standard, where the misrepresentation may have influenced the patent examiner in the course of prosecution,

id. at 9,and the Rule 56 duty of candor and good faith before the PTO.  Id. at 10. 

The Court concluded that to the extent one standard requires a higher showing of materiality than another, the requisite finding of intent may be lower.  Thus, the 1992 version of Rule 56 does not supplant or replace case law, and the Federal Circuit followed the district court?s application of the ?reasonable examiner? standard and its case law precedents in assessing the misrepresentations at issue in DitchWitch. 

What do you think?  Did the Federal Circuit clarify the materiality standard required for a finding of inequitable conduct? 

Today's Blogger:  Nan Joesten