The Far-Reaching Effects of Inequitable Conduct

The Federal Circuit recently held that an applicant's failure to disclose material notes to the U.S. Patent and Trademark Office ('PTO') can result in a finding of inequitable conduct that may render a patent, and even related patents, unenforceable. In Monsanto Co. v. Bayer Bioscience, N.V, No. 2007-1109, ___ F.3d ___, 2008 WL 200027, 85 U.S.P.Q.2d 1582 (Fed. Cir. Jan. 25, 2008) ('Monsanto III'), the Federal Circuit affirmed the District Court for the Eastern District of Missouri's holdings: 1) that a patent was unenforceable for inequitable conduct based on the applicant's failure to disclose its employee's notes that directly contradicted claims made by the applicant during prosecution; and 2) that the district court had jurisdiction to declare three related patents unenforceable as well despite the fact that the patent holder had previously filed a motion to dismiss claims based on these three patents and had signed a covenant not to sue for infringement thereof.