The Case for Eliminating Patent Law's Inequitable Conduct Defense

Abstract

This paper argues for the elimination of the judicially crafted inequitable conduct defense, which will invalidate a patent upon the defendant’s showing that the patent was obtained by deceiving the patent office. Inequitable conduct commonly comes up as an accusation that the patentee, when applying for her or his patent, failed to live up to a duty of disclosure and candor. This duty and the inequitable conduct doctrine’s enforcement of it are meant to help avoid the issuance of undeserved patents, which would unfairly restrict the rights of the public. Unfortunately, in the real world, the inequitable conduct defense can make a mess of things, driving up litigation costs, changing settlement dynamics, perverting patent economics, elevating strategic behavior, and creating a sideshow of mudslinging for the jury. The existence of the inequitable conduct defense also adds costs and complexity to patent prosecution. Patent law’s inequitable conduct defense is a mistake that can be undone. Either Congress or the Supreme Court should seize the opportunity to eliminate the defense entirely.

Part I provides background on patents and traces the evolution of the inequitable conduct defense. Part II explains how the inequitable conduct defense creates waste, during both the patent prosecution process and litigation. Part III reviews attempts by the courts and Congress to rein in the inequitable conduct defense and explains why these attempts have been inadequate. Part IV argues that complete elimination of the inequitable conduct defense is the best course.

Keywords: Patent, Intellectual Property, Inequitable Conduct

JEL Classification: K39