Beware the Inequitable Conduct Charge! (Why Practitioners Submit What They Submit)
19 Pages Posted: 23 Nov 2009
Date Written: November 17, 2009
In recent years, the U.S. Court of Appeals for the Federal Circuit presided over an expansion in the doctrine of inequitable conduct. As a result, practitioners have become increasingly concerned that they and the patents they prosecute may one day become embroiled in an inequitable conduct challenge, with potentially devastating consequences for both the patent owner and practitioner.
At the same time, the USPTO has proposed new restrictions and requirements on applicant information submissions, including a requirement that applicants specifically refer to and explain the relevance of particular portions of references if they submit information in excess of set limits on the number and/or length of references. According to the agency, “ensuring a focused and thorough examination is a joint responsibility of the examiner and the applicant” and the goal is to help the “examination system to ‘get it right’ the first time.” During the same period, Congress has entertained proposals to authorize the USPTO to require applicants to submit analyses of the pertinence of references found in prior art searches.
Thus, while various Federal Circuit decisions have evidenced an increasing judicial receptiveness to inequitable conduct-based challenges, the USPTO and Congress have considered enlarging the obligations of applicants to affirmatively participate in the examination process. Practitioners feel squeezed. On the one hand, the USPTO has sought to require applicants to either limit the amount of information submitted, or to go on record with explanations relating to the precise relevance of that information. At the same time, the evolving law of inequitable conduct seems to dictate the submission of more and more information, and to make such elaboration very risky.
This paper discusses various aspects of this “disconnect” from the point of view of the practitioner seeking to comply with his or her disclosure obligations, within the confines imposed by the practical realities that govern modern prosecution practice.
Keywords: patent, inequitable conduct, submission
JEL Classification: K41, O34
Suggested Citation: Suggested Citation