There’s a Hole in the Bucket: The Effective Elimination of the Inequitable Conduct Doctrine

Abstract

In 2011, the combination of both Therasense, Inc. v. Becton Dickinson and Co.1 and the enactment of the America Invents Act (AIA)2 effectively eliminated the judicial doctrine of inequitable conduct in patent cases. In order to obtain a patent, applicants have been long had a duty of candor before the U.S. Patent and Trademark Office (PTO).3 Inventors are often the most knowledgeable about why their invention is new and nonobvious over the prior art, which are essential requirements for patentability.4 Candid correspondence with the PTO is essential to preserving integrity in the ex parte patenting process, where no other party participates to induce full disclosure. The doctrine of inequitable conduct, historically, has been the key gatekeeper policing the patent system’s integrity.5 Now, with its virtual elimination, is there still sufficient incentive to comply with the “duty of candor”6 principles that have traditionally served the patenting process? It is without question, the use of inequitable conduct to police the duty of candor had been abused over the years. But, perhaps this cure is worse than the disease.