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INEQUITABLE CONDUCT

RESEARCH METHODOLOGY

AIM AND OBJECTIVEThe Aim of the topic is to study the law of Inequitable Conduct. The author also wishes to examine the impact of Inequitable Conduct on the American patent law system. The objective of the research are as follows1. To study the American Patent law system. 2. The patent system completely relies on the applicant “ A Duty of Candor”. The non observance of the duty leads to Inequitable Conduct. By the present topic, the Researcher seeks to analyse the essentials that person must fulfil in order to get his invention patented in respect of the “Duty of Disclosure”. 3. The Project shall make a brief study of the law and the impact that it has upon the inventor and all person connected therewith and above all the “Public Interest” as a whole. SCOPE AND LIMITATIONThe field of patent prosecution is wide, but the present research shall be dealing with and

focuses on only the “Inequitable Conduct” in context with American patent system. The scope of the present research extends to the analysis of the impact of the Inequitable Conduct only on the American patent law system, i.e. the examination of Rule 56 of the United States patent law. The research shall be limited to the extent of the duty that is owed by the inventor towards the patent office, the breach of the duty and the consequence of the same and finally as the topic suggests “the Impact of the abovementioned on the U.S Patent System”

RESEARCH QUESTION1. What is the Patent Examiner Perspective in reaching the conclusion of the Inequitable Conduct keeping in mind the test laid down and the pre-requisite essential for the claim of the Inequitable Conduct?
Piyush Rajput Page 1

What changes are made out after the “THERASENSE CASE” and the concept of materiality modify? 3. leads to the Inequitable Conduct provided it balances it self in equilibrium of the test laid out. What modification shall be necessary for removing the Plague of Inequitable Conduct? HYPOTHESISAny failure to disclose a fact that is material to the subject matter of the patent.INEQUITABLE CONDUCT 2. This method was considered apt as it is a theory based topic MODE OF CITATIONA uniform system of citation as per the NLS guide compiled with uniform legal citation. has been adopted by the researcher for the particular paper. RESEARCH METHODOLOGYThe researcher in project has relied on “Doctrinal Method” of research. Piyush Rajput Page 2 .

F.1. On the other hand the inventors “duty of candor” requires him to disclose those facts that might Impact on his patent rights. The patent right is actually given to exclude the others from practicing the invention that is claims. Though the examiners in there examination in the patent search for the prior art. but the search are not at all times conclusive because of the tremendous work load. Co. 1349 (FED.6(1996) purports to set out Standard for doing business with the PTO Aventis Pharma S. CIR. _________________________________________________________________________ 1. B/ell Tel. That ultimately led to the PTO to promulgate 37 C. Amphastar Pharm. 1. 2008) Patent agents are licensed to prosecute patents before the PTO.R 1. This basically deals with the duty that the inventor owes towards the patent officer..A v. Ultimately the public is the real beneficiary of what is patented and can receive the fruits of the same only when inventor has dealt honestly with the patent office.5.F.It is an act of breach of standards in the transaction of business with the patent office. Neither the congress nor the commissioner of the patent and the trademarks mentions “Inequitable Conduct”1. 128 U. It is sometimes been termed as “Atomic Bomb”3 . 37 C.1WHAT ISINEQUITABLE CONDUCT? The law requires that he who comes to equity must come with clean hands.INEQUITABLE CONDUCT IMPACT OF “INEQUITABLE CONDUCT” OF PATENT VALIDITY STUDY OF UNITED STATES PATENT LAW. The courts are basically guided by the rules framed but ultimately they are governed by the federal circuit and supreme court precedents. 4. 2.R ( Rule 56). They must have passed the bar exam given by the PTO Piyush Rajput Page 3 . TheRomance Discoverable in Patent Cases. 1334..3D. 525F. The principle of Inequitable Conduct is based on the same theory. On the contrary it promulgates the standard of conduct that needs to be adopted by the attorneys and there respective agents before the patent office 2. United States v.370 (1888). Rule 56 lays a “Duty of Candor and good faith” that needs to be observed by someone who seeks for patent before the patent office that includes the attorney or the agent as well4. see also Hon.S 315. What the law requires is not that the applicant should know every detailed specification of the patent. Simon Rifkind. Thus the deliberate failure to not to disclose the material fact is what forms the basis of “ Inequitable Conduct”.. Inc. It requires that the infringer with the intent of getting the patent did not disclose all the information that is material and submitted false information. 3.

Co . Hartford Empire Co. 357S STAT.. 324 U. 11.INEQUITABLE CONDUCT The rule becomes important because if it is proved that the act of “Inequitable Conduct” is done that might render the complete patent invalid. The present doctrine is judicially created. The duty remains intact even in the case of pending claims until it is withdrawn. the congress removed the same cause of action8. Gen Excavator Co. In the year 1836. 1. Co.. . Auto Motive Mark. 318. CH. Since the patent act of 1790. Keystone Driller Co v . Act of February 21. There are various policy considerations behind the approach to Inequitable Conduct. 117 (1836). ________________________________________________________________ 5 Precision Instrument Mfg. Precision Instrument Mfg. Hazel Atlas Glass Co v. Co .2 HISTORICAL BACKGROUND.7 S1 STAT. Auto Motive Mark. the legislature has recognized the Inequitable Conduct6. There is rather no duty to disclose that fact which is not material to the patent. In the 70s and 80s. 815 (1945).A and Court of Claims as “Presumptively Controlling Standard..v. It was in the year of 1945 that the supreme court realized that the public interest is damaged due to the patent obtained through fraud10.3POLICY BEHIND INEQUITABLE CONDUCT. Patent Act of 1836. The consolidated patent act of 1870 made it quite broader and was applicable to the patent already issued by means of deception9.. 290 U.323(1793). the standard for Inequitable Conduct was gross negligence The federal court was created in the year of 1982 to deal with the issues pertaining to the patent11 1.324 U.S 806. CH.” Piyush Rajput Page 4 . The patent act of 1793 extended the same period of one year to three year7.1793.S 806 (1945) (Finding unclean hands where the Patentee had suppressed Evidence of Perjury at the PTO and attempted to enforce the Perjury Tainted) .P.1770. 322 US 238(1944) . 6 7 8 9 10 11 Act of April 10. Co. It evolved from the three Supreme Court decisions that supplemented the “unclean hand” maxim5.S 240 (1933). 109-112 (1770). It provided for a private action when the patent was obtained improperly within one year from the date of issuance. CH/23016 STAT 198-209. S 10 1 STAT.v. Considered Decision of C.C. Consolidated Patent Act of 1870. The unpatentibilty of a invention is made out when there is sufficient evidence for the same coupled with the burden of proof standard and by giving broader construction to the inventions specification. CH.

4ESSENTIALS OF THE INEQUITABLE CONDUCT- In order to establish that there has been an breach to the Duty of Candor the courts looks into the essentials that are 12 13 14 There must be an Intent to Deceive _____________________________________________________________________ Nicole M. the attorney and the applicants do not disclose all the information13. Amphastar Pharmaceuticals Inc. Aventis Pharma S. Inequitable Conduct: A Flawed Doctrine Worth Saving. But due to the fear of violating the Inequitable Conduct. Murphy. So naturally the inventor should not be allowed to obtain the patent by fraud itself.INEQUITABLE CONDUCT  1.3.2To Ensure Quality Patents- The full disclosure to the PTO is necessary that the examiner has all essential information during the course of examination and could therefore enhance the quality of the invention. Moreover high cost to comply with the requirements of disclosure preclude the inventors from protecting there inventions and the ideas14.1349-50.3Reduction of litigation and the prosecution cost. Lisa Dolak.A v. Piyush Rajput Page 5 .3.  1. 1. To deter people from committing such act it provides for penalty that includes that the complete patent is held unenforceable.. Doctrine of Reform.3D 1334. A study in 2003 of National Academy of Sciences held that the rate of assertion of the doctrine is excessive. 525 F.  1.1 To Prevent FraudIt is based on the principle that” The 12 far reaching social and economic consequences of the patent give the public a strong incentive to ensure the patents some from “ backgrounds free from fraud” .3.

Of South Dakota. The Kingsdown was widely accepted up till the Therasense case.16 it was stated by the federal court that the fact which a person got to know. Kingsdown intent is based on the ground of (a).CIR. v Dayco Corp. Piyush Rajput Page 6 .876 (FED.On the contrary the nondisclosure also doesn‟t satisfy the element of intent as it is dictated by the good faith. makes an inference to mislead by intent. 863 F. But the court have been asserting that “Materiality does not include Intent”15. Though some courts have lowered intent material and some have rather inferred bad faith principle. Co. “But it might have been test” ________________________________________________________________ 15 16 17 Larson Mfg.2MATERIALITY The circuit court have arrived at three different standards to reach to the materiality    The Subjective “but for test” The Objective “but for” test. 1988). CIR. Hollister. The case law of the federal court have varied and have been sometimes inconsistent.4. In. Burlington Industries Inc. It requires that the omission were intentional.2D 1418.gross negligence and (b) acts indicating an intent to deceive 1. Both the cases advocated different aspect. 559 F 3d at 1340. Star Scientific 849 F. 1988).4.17it was held that if a conduct amounts to “Gross Negligence” it shall not conclude the intent itself.INEQUITABLE CONDUCT  The Information that is suppressed must be material. On the contrary in. Kings down Medical Consultants Ltd v. 1421 (FED. 1. The federal circuit has allowed the indirect and circumstantial evidence because the direct evidence is rarely available.2D 867.1INTENT TO DECEIVEThe Intent of deception is necessary so as to prove a fraud claim.

The Courts said that the plaintiff should conduct the experiments more Kevin R.2D 708. Anchor Hocking glass Corp. if the applicant was aware of the prior art and a ordinary man of prudence could also say that the invention was not original. The test for reasonable examiner continued. an Attorney shall put his clients business in complete Jeopardy21. First promulgated in 1949. Kasey.DEL. from the foreign application. Consequently. Endo pharmaceuticals.1967). 716-17(10TH CIR. 1. Admiral Corp. The materiality word is defined in 37C. 296 F. Inventorship conflicts. ___________________________________________________________________________ 18 19 20 21 Waterman Big Pen Corp v. The reason is that the person alleging the fraud must also prove that the representation is rather material18.INEQUITABLE CONDUCT Under the subjective but for test. Under the objective but for test.R 1. Zenith Radio. v.P V. apart from publication and prior art.20 The present rule is substantiated by PTO‟S Rule 56. because of no finding of Inequitable Conduct. the courts seeks as if the misstatement shall have may effect on the examiner. workers or the third party. the court found that the misstatement were not material to the fact. it straight away said to strike of the application where the fraud is committed. he shall be guilty of fraud. Up to the federal circuit 2006 decision on Purdue Pharma L. The rule in plain words simply meant what the examiner would think in a particular case that comes before him. 1961). “Infectious Unenforceability. The courts are not obliged to take in to consideration the effect of misrepresentation19. Information work includes “All information material to the patent”. preliminary examination searches.A Sheaffer Pen Co.. the patent would be granted irrespective of the misrepresentation made. If the information is not Important as considered by the examiner the information in not material. SUPP AT 471. W.56(b). The extent or reach of Associated conduct on Associated Patents” Piyush Rajput Page 7 .5 IMPACT OF INEQUITABLE CONDUCTA patent obtained through such conduct is completely unenforceable. Information is “Material” when the examiner would consider as to allow the application or not to allow. it includes sales. 253 F. A person might get aware from various sources like the trade shows. Under the but it might have been test. In Glass works v. It not only extends to the claims but to the complete patent itself. Corp. 856 (D. 849. It is also called the rule of disclosure . derived knowledge and the prior publication user.267 SUPP.F.

2d 1053 (Fed. The court held that a person who holds a invalid patent makes the license also unenforceable against the licensee as well. v. Adkins26. supra note 3019. Practically most of the disputes do not reach the trial court as the parties go for a stellement23. It‟s now a matter to be debated as to a licensee can bring the patent owner to books for the misrepresentation of the patent. sued Therasense 1. 24 25 26 See. 395 U. it has resulted in loss of attorney client. Dickinson and co. Mossinghoff25 but the action shall be the same as the disciplinary action before the bar and accordingly it will occur after a long duration.03 822 F.INEQUITABLE CONDUCT In some cases theInequitable Conduct may affect the other patent in suit22. but Preferably”notion to the European patent office and the same was suppressed to the American Patent office. A protective membrane was required to cover the strip as a part of prior art.‟ 1. 1987) Lear Inc. It was discovered that the patentee has already declared the “Optionally. Later on Becton. Reportedly. In the year 1996. The same was stated in Jaskiewicz v.6 SHIFT IN THE STANDARD ! ( THE THERASENSE CASE) Therasense issue involved a patent for the blood glucose strip for diabetes (“The‟551 patent”). and approximately 85% of civil cases from the district forum. Apart from the above sated. During the „551 prosecution. Even after the reminder the patentee kept on filing claims for a strip that did not require membrane. Other consequences are the liability in the antitrust suit. this conduct may result in disciplinary actions against the attorney enrolled at the PTO24 .S. In some cases the court may go beyond declaring a patent unenforceable and award Rule 11 sanctions against the party. absence of good faith does not proves intent to deceive”. Judicial Business of the United States Courts 1996 Report of the Director 165. In Lear v. Adkins. 95% of the Civil cases filed before the trial court were withdrawn. In the meanwhile the prior art describing the test strips patent no ( “The „382 patent”) which consequently belonged to the patentee himself required for “optionally. 653. but preferably.7 INEQUITABLE DOCTRINE AFTER “THE THERASENSE CASE” The federal court held that “ On the withholding of the material information.671-74 (1969) Piyush Rajput Page 8 . but preferably “ for the protective membrane. The examiner asked for the affidavit so as to prove that a ordinary man of prudence would understand “Optionally. _______________________________________________________________________ 22 23 Casey Note 24. CHISUM. see. Cir.

The biggest of all is the non -availability of cure even where there was no intent to deceive in cases where reference is discovered during the prosecution30. Invalid patent yields to invalid Licensee.Cir. 48 F.C 257(C). Even the courts are perplexed due to the lack of uniform precedent . It requires a complete change in law. What is meant is that information is but for material if the examiner would not have allowed the patent if he was aware of the Information. at 85-87. One cure is to give a statement of relevancy. is the judgment of the attorney28.8 PROBLEM WITH THE CURRENT LAWThe doctrine defies the principle of “Audi alteram partem”. Possible cure is a third party intervention (arbitration) that might reduce the burden on the courts. What is material.. A range of possible outcomes should be made once the matter is before the court. Moreover the PTO proposed for the revision of the Rule 56 which adopted for the “But for materiality test”.9 CURE FOR “PLAGUE” A member of (AIPLA)31 suggests the complete elimination of the doctrine because it has resulted in crippling the patent litigation and has become a form of liability . see. The basic problem attorneys face is that they are to work on their own instinct as to what information to provide. 1182 (Fed. American Intellectual Property Law Association Piyush Rajput Page 9 . 1977). After the judgment the patent owner may cure Inequitable Conduct post issuance27.3d 956 (Fed. It ex parte proceeding. There should be post issuance cure. supra note 7. 115F. 1. The federal court often reverses its order and the order of the district court also29.INEQUITABLE CONDUCT As far as the materiality is concerned the court held that the conduct may be found on the intent alone and the materiality is the “But for materiality”. see Magnivision Inc. 1. the applicants over burden the information because of the harsh penalties and to curb the same they should only provide information that is material. As discussed before.e. Bonneau co. the problem is the licensee issue. Mollins PLC v Texton . Cir.3d 1172. _______________________________________________________________________ 27 28 29 30 31 U.S.(e) Examples of the these Judgment are set in the Patricia Brantley‟s article on Ethical issue facing patent attorney. Mostly it involves multiple patents and at last yields to renegotiation of contracts.g. 1995) . see Goldman .

The court has significantly revaluated the same in the Therasense case by raising the standard of both the intent and materiality. The complete research focused on the what the thing are in the actual scenario. And ultimately the Public Interest will be served Piyush Rajput Page 10 . With the great power of invalidating the patent on the grounds of Inequitable Conduct the examiners need to be cautioned. The implementation of the but for test is remarkable together with the abolishment of the should have known test and the sliding scale step. The shortcomings can be cured by the ideas reflected in the research itself.INEQUITABLE CONDUCT CONCLUSION “Duty of Candor” is surely a feature that requires a full disclosure and that is in the interest of the public. It has also provided a guideline for the attorneys and the agents. Every law has certain shortcomings but definitely it is to curb the malpractices. It was surely a cure for the “Plague”.

A v.S 315. Automotive Maintenance Mark.C for the prior art references.3d. Cir. to set aside patents on the ground that they were obtained by fraud and it was held that the public is the real beneficiary of what is patented and can receive the fruits of the same only when inventor has dealt honestly with the patent office  Aventis Pharma S.S. brought suit against the defendant bell tel co.In this case it was promulgated the standard of conduct that needs to be adopted by the attorneys and there respective agents before the patent office  Precision Mfg. 1349 (fed. Inc. The theory of the maxim “he who comes into equity must come with clean hands” was propounded in this case.INEQUITABLE CONDUCT ANNOTED BIBLOIGRAPHY PRIMARY SOURCES  STATUE 1.525f. 128 U. 1334. 815 (1945). In context that the doors of the courts closes where the person hands are tainted with the “Inequitable Conduct” Piyush Rajput Page 11 .S 806. This case related to infringement of the patents and the breach of the contract. Amphastar Pharma. Co. V. UNITED STATES CODE TITLE 35 – PATENTS  CASE LAWS  United States v Bell Tel. Co. .the United States are plaintiffs.S. 2008) It was a case where the plaintiff“Aventis” had the patent and the reissue patent in relation to the low molecular weight heparins which was marketed in U.co. The patent examiner rejected it under section 35 U.370 (1888) In the present case-. 324 U.

R. V. On the counterclaim the court ruled that Zenith had not infringed the Admiral patent  Jaskiewicz v. 1961). If the facts were fully disclosed then it would have come under prior art. Zenith Radio. The patent was issued even after error was made in the petition. 1988). Cir.876 (Fed. 1.  Admiral Corp. Anchor Hocking Glass Corp253 f. 1988 This case relates to the Inequitable Conduct of the attorney who applied for it. Supp. Cir.. It involved misconduct by filing of a patent application in the name of Pierre Baronnet. makes an inference to mislead by intent. Corp.INEQUITABLE CONDUCT  Burlington Industries Inc. at 471 Corning Glass Works sued. Patent prosecution took many years and included amendments prior art etc. 1987) Appellant had committed misconduct before the PTO.2d 867. Admiral asserted infringement of covering a spindle used in automatic record changers.2d 1418. Zenith Radio Corporation. 716-17(10th Cir. Corning glass works also charged unenforceability by reason of fraud on the Patent Office and included a declaratory judgment counterclaim. relating to various features of a remote-control system for television receivers and relating to certain television circuits. the Kingsdown attorney finally filed a new set of claims. defendant denied the infringement charge on the ground that the claims were not patentable over the prior art. it was stated by the federal court that the fact which a person got to know. Mossinghoff 822 F. In answer. The trial court found that all the Zenith patents were valid. 296 f. 1421 (fed.Cir. 863 F. v Dayco Corp849 f.The PTO charged that submission of a patent Piyush Rajput Page 12 .57 (Rule 57) it is requires for the signing of oath in person recognising the specification. for the infringement of product and process claims of its Stoked patent.F. invention itself. sued Admiral Corporation.2d 708. Thereafter Hollister alleged that Kingsdown obtained the patent by “ Inequitable Conduct” and the concept of the negligence in the Patent Prosecution was evolved  Glass Works v..The court found that the misstatement were not material to the fact. Anchor Hocking Glass Corporation.  Kings down Medical Consultants Ltd v.2d 1053 (Fed. Hollister). Under 37 C. Sec.

It‟s now a matter to be debated as to a licensee can bring the patent owner to books for the misrepresentation of the patent. v Adkins395 U. Piyush Rajput Page 13 . It was held that failure to cite material information was Inequitable Conduct. SECONDARY SOURCES  ARTICLES  Rebecca C.671-74 (1969 The court held that a person who holds a invalid patent makes the license also unenforceable against the licensee as well. Dickinson and co.. Even after the reminder the patentee kept on filing claims for a strip that did not require membrane. Inc. In this case the prior art reference was not cited. 1995) . 1182 (Fed. 649 F. A protective membrane was required to cover the strip as a part of prior art. v Bexton.INEQUITABLE CONDUCT application as declaration of the inventor was improper under both Rule 57 and 35 U. Disclosure among various other documents does not amounts to Inequitable Conduct.  Therasense v Becton &Dickinson and Co.3d 1276 (Fed.(2011). December .48 F. Therasense issue involved a patent for the blood glucose strip for diabetes (“The‟551 patent”).E Mcfadyen and Katrina M. Rule 56 After TheTherasense. Prior was later on cited in the re-examination.3d 1172. During the „551 prosecution.S. Cir.S.Are We Bound For Change?Intellectual Property Today 3. Sec. Quicker. but Preferably” notion to the European patent office and the same was suppressed to the American Patent office.Cir. Prior art reference was later on submitted but only after the patent issued as one among many.  Lear. 653.C. 2011) (en banc). Later on Becton. 111. sued Therasense  Mollins PLC. It was discovered that the patentee has already declared the “Optionally.

L &Tech 37. Ethics in United States Patent Practice. IP Law 360. 431 (3rd Edn.)5.7HarvardJ. Bringing Equity Back To TheInequitable ConductDoctrine.48 Houston Law Review. 62 American Bar Association Journal. It leads to step by step procedures at every stage of Interference Process  Martin J. Henry. Goldman. Curing TheInequitable Conduct Plague In Patent. BOOKS REFERRED  Jerome Rosenstock. 2010..INEQUITABLE CONDUCT  Alan J.  Bullwinkel and Allan.  Robert J.) . The University of Akron School of Law March 8.(2011) David J. Cases and material on patent . Muller.27Berkley Tech. Sughrue symposium on Intellectual Property law and policy. Akron Intellectual Property 95. 735. L.  Janice M. Adelman et al. (Article presented at 12th annual Richard C. 421.Patent Interference Practice handbook.EvolutionOfInequitable Conduct Defense InPatent Litigation. It specifically deals with the various aspects and requirements for the Inequitable Conduct Piyush Rajput Page 14 . Managing TheInequitable ConductBy Legislation And Regulation. (1997). L. (2012)  Von Tersch and Glenn E. 1976). Hankins and Juliana Tanase. 1. 465.§2. It specifically the case laws and various aspects of patent prosecution. Inequitable Conduct. (1993-1994). (2011)   Angie M. (April.Patent Law.  Priscilla G Taylor.J 349. Specifically Fighting TheInequitable Conduct.J 20 Hastings Comm.91 to §2-100(2002). Kasper. (2011). 349.&Ent.

4.“Chisum onPatents” Vol.03 [4][b][v].  Donald s Chisum‟s.INEQUITABLE CONDUCT  Manual of Patent Examining Procedures. applicants agents and the representative it also contains the instruction for the examiners as well from pg2000-1 to 2000-12.    www..com. §11.2000). This deals with the procedural aspects specially for the attorneys.  WEBSITES. (7th Edn.com Piyush Rajput Page 15 .com Lexisnexis. Jstor.heinonline.03[4] to § 11.