Patent Law

Inequitable Conduct Policy

By Gary Odom and Jordan Kuhn

Former USPTO Commissioner Harry Manbeck, now with Rothwell, Figg, Ernst & Manbeck, has written the Senate Judiciary Committee with a wise perspective on one ill-considered decimation proposed in the folly codified as S. 1145: "I believe that it would be a mistake to eviscerate the [inequitable conduct] doctrine as it now stands."

Manbeck stands for integrity in patent prosecution, for accountability from misconduct:

The purpose of the inequitable conduct doctrine is to sanction and thereby discourage cheating by patent applicants and their representatives, not to penalize them for honest mistakes. Unfortunately, the value of a patent, the right to exclude others from practicing the patented invention, has unquestionably led to certain applicants intentionally misleading the Patent and Trademark Office to obtain their patents. Presently, the penalty for such inequitable conduct, if proven to the satisfaction of the court, is that the patent may be declared unenforceable. Such a penalty of course creates a powerful incentive for applicants and attorneys to deal in candor and good faith with the PTO; yet cheating still occurs from time to time.

Since 1992, and even before, Rule 56 has provided that "no patent will be granted on an application in connection with which fraud on the Office was practiced, or attempted or the duty of disclosure was violated through bad faith or intentional misconduct." Thus, the Patent Office has clearly and consistently been concerned with "attempted fraud" and been unwilling to excuse it. It also has recognized that the possibility of a meaningful penalty is important to deter contemplated misconduct.

I believe that the inequitable conduct doctrine should not be changed by legislation so that sanctions for misconduct are ruled out just because the patent claims in question are found to be valid. When inequitable conduct has occurred there should be a penalty enforced against the assertion of the patent in question. That is needed to guard against misconduct before the PTO.

The full letter is highly recommended reading.

Full post as published by The Patent Prospector on March 12, 2008 (boomark / email).