The Inequitable Conduct Gyre Widens
25 Pages Posted: 22 Mar 2009
Date Written: March 19, 2009
The last several years have seen a general trend in the direction of expansion of the doctrine of inequitable conduct. This paper identifies several discrete dimensions of that expansion, including judicial reaffirmation of an expansive materiality standard, a lengthening list of categories of potentially material information, and reinvigoration of the practitioner's duty to investigate whether potentially material information exists in some circumstances. The resulting combination has the potential to significantly increase the burdens of compliance with the duty of candor, as well as the risks associated with inequitable conduct charges - risks that would only be amplified if additional disclosure requirements recently proposed by the U.S. Patent and Trademark Office are implemented.
Also noted are several, less significant, recent judicial limitations on the inequitable conduct defense.
Keywords: patent, inequitable conduct
JEL Classification: K11
Suggested Citation: Suggested Citation