After a patent application is filed with the United States Patent and Trademark Office, each individual involved with the patent application has a duty to disclose information that is material to the patentability of the invention. Failure to disclose all material information coupled with an intent to mislead the Patent Office may jeopardize the validity and enforceability of any patent maturing from the patent application.
The following case discusses the requirements to plead inequitable conduct during litigation. Although this case focuses on the procedural steps during litigation, it is important to understand the level of detail required to properly allege inequitable conduct so that one may properly gage the likelihood of success based on inequitable conduct either as the accused or the accuser.
In Exergen v. Wal-Mart Stores, Inc. 2006-1491 (Fed. Cir. Aug. 4, 2009), the accused infringer showed that the patentee had knowledge of a particular prior art reference material to the patentability of the invention. The accused infringer alleged that the patent owner had the intent to mislead the Patent Office since the material prior art reference was not disclosed in the patent at issue. The Court reasoned that one cannot reasonably infer an “intent” to mislead by merely failing to disclose a prior art reference. The Court stated that the alleged infringer failed to provide specific factual allegations to show that a specific individual knew of material information and then decided to deliberately withhold the material information from the Patent Office.
Although the patentee avoided facing the allegations of inequitable conduct, the recommended course of action is to disclose all relevant information regardless of whether that information is material to patentability of the invention. Generally, it is better to spread a wide net in deciding which information to disclose to the Patent Office and address the potentially fatal information before the Patent Office than to face charges of inequitable conduct during litigation. The Examiner may decide that the potentially fatal information is inconsequential or not the closest prior art. As a result, any patent issuing from your patent application is “presumed” to be valid over the information. In this position, the patentee has a stronger patent. Also, defendants will have more difficulty in successfully alleging inequitable conduct.
You may also be interested in Duty to Disclose.
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