Citations (1)


Footnotes (127)



The Federal Circuit and Inequitable Conduct: An Empirical Assessment

Lee Petherbridge

Loyola Law School Los Angeles

Jason Rantanen

University of Iowa - College of Law

Ali Mojibi

October 4, 2010

84 Southern California Law Review 1293
Loyola-LA Legal Studies Paper No. 2010-48

Inequitable conduct is a unique judicially created doctrine designed to punish patent applicants who behave inequitably toward the public in the course of patent acquisition. Its name alone strikes fear into the hearts of patent prosecutors, and justly so – for when successfully asserted, inequitable conduct can have devastating consequences that reach far beyond a patentee’s case. The need for a systematic empirical study of inequitable conduct jurisprudence has become especially pressing now that the Federal Circuit is reviewing inequitable conduct en banc – in terms so broad as to be unprecedented in the history of the doctrine. This Article reports such a study.

The study reported here provides evidence, inter alia, that the Federal Circuit applies an inequitable conduct standard stricter than that applied by a substantial number of the tribunals it reviews. The Federal Circuit’s stricter standard manifests primarily through the intent to deceive component of inequitable conduct doctrine. For all intents and purposes the Federal Circuit has no substantive jurisprudence around the balancing component, and the materiality component is comparatively less impactful then intent to deceive. The court appears to have trouble communicating its stricter standard to lower tribunals. We offer some explanations for why this might be so, and offer some modest suggestions that might advance inequitable conduct doctrine.

Number of Pages in PDF File: 64

Keywords: Law and Courts, Federal Circuit, Patent, National Circuit, Jurisprudence, Empirical, Content Analysis, Inequitable Conduct, Unclean Hands, Fraud, Intent to Deceive, Equitable, Remedy, Patent Office, Patent System, Patent Litigation, Patent Prosecution, Duty to Disclose

Open PDF in Browser Download This Paper

Date posted: October 3, 2010 ; Last revised: December 11, 2014

Suggested Citation

Petherbridge, Lee and Rantanen, Jason and Mojibi, Ali, The Federal Circuit and Inequitable Conduct: An Empirical Assessment (October 4, 2010). 84 Southern California Law Review 1293; Loyola-LA Legal Studies Paper No. 2010-48. Available at SSRN: https://ssrn.com/abstract=1686102 or http://dx.doi.org/10.2139/ssrn.1686102

Contact Information

Lee Petherbridge (Contact Author)
Loyola Law School Los Angeles ( email )
919 Albany Street
Los Angeles, CA 90015-1211
United States
213-736-8194 (Phone)
213-380-3769 (Fax)

Jason Rantanen
University of Iowa - College of Law ( email )
Melrose and Byington
Iowa City, IA 52242
United States
No contact information is available for Ali Mojibi
Feedback to SSRN

Paper statistics
Abstract Views: 6,318
Downloads: 1,771
Download Rank: 6,417
Citations:  1
Footnotes:  127