Modernizing Patent Law's Inequitable Conduct Doctrine

58 Pages Posted: 1 Jun 2008


Since its inception, the inequitable conduct doctrine, which requires the inventor to disclose to the Patent Office all information relevant to the patentability of the invention at issue, has received tremendous attention from the judiciary, the Patent Office, the bar, and scholars. Many scholars have also written on the Patent Office's failure to properly exam patent applications and the resulting negative impact on society from the Office's issuance of "bad patents." Surprisingly, however, no one has fully linked these two discussions and, in turn, performed a fundamental, theoretical analysis of the inequitable conduct doctrine in light of the utilitarian theory that underlies American patent law. This Article fills this gap by developing such a conceptual framework with which to evaluate the inequitable conduct doctrine and identify its capacity to reform the patent system. The Article then applies this framework to suggest reforms that enhance the doctrine's ability to improve patent quality, while restraining the inherent tendency to overcomply by overloading the Patent Office with information.

This new conceptual framework is important in two ways. First, it has immediate use in both evaluating proposed changes to the doctrine, such as those in the pending Patent Reform Act, and suggesting others. Second, the framework is a building block to be used in future scholarship on the inequitable conduct doctrine and, more generally, the ever-present movement to reform the patent system.

Keywords: inequitable conduct, patent law, patent reform, patent quality, over compensation, USPTO, Patent Office

JEL Classification: K39, K40, K42, O31, O34

Suggested Citation

Cotropia, Christopher Anthony, Modernizing Patent Law's Inequitable Conduct Doctrine. Berkeley Technology Law Journal, 2009, Available at SSRN:

Christopher Anthony Cotropia (Contact Author)

University of Richmond - School of Law ( email )

28 Westhampton Way
Richmond, VA 23173
United States

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