13 Pages Posted: 21 Dec 2010 Last revised: 22 Sep 2011
Date Written: December 20, 2010
Addressing squarely the issue of the multiple standards of materiality in inequitable conduct litigation, Therasense v. Becton Dickinson raises many difficult issues that could be clarified through the lens of the analogous concept of fraud on the Trademark Office. The standards for finding fraud on the Trademark Office lack the ambiguity found in the doctrine of inequitable conduct, despite the parallel penalties of unenforceability and requirements of proof of materiality and intent. Informed by the many decisions of Judge Michel, this essay concludes that the standards for finding fraud before the Trademark Office, as set forth in In re Bose, lights the path the United States Court of Appeals for the Federal Circuit should follow in Therasense, setting workable standards for finding inequitable conduct before the United States Patent and Trademark Office.
Keywords: inequitable conduct, therasense, bose, fraud, patent, trademark, intellectual property
Suggested Citation: Suggested Citation
Winston, Elizabeth I., Clarifying the Doctrine of Inequitable Conduct (December 20, 2010). John Marshall Review of Intellectual Property Law, Vol. 10, 2011; CUA Columbus School of Law Legal Studies Research Paper No. 2011-17. Available at SSRN: https://ssrn.com/abstract=1728902