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The Federal Circuit Attempts to Right the Inequitable Conduct Ship

By Darryl J. Adams

The patent application process ' referred to as patent prosecution ' is ex parte. To ensure the integrity of the application process, patent applicants have a duty to prosecute patents with candor, good faith, and honesty. A breach of that duty raises the defense of inequitable conduct. Inequitable conduct typically requires proof that: 1) the patentee withheld material information or made a material misrepresentation; and 2) the patentee did so with the intent to deceive the U.S. Patent and Trademark Office (the “PTO”).

The U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) has long maintained a high bar for proving inequitable conduct. This high bar is appropriate given the severity of the remedy ' unenforceability of the entire patent ' and the relative ease of using hindsight to find fault with the prosecution of a patent. Several recent decisions, however, have pointed toward a sinking standard for proving inequitable conduct, which has created an atmosphere of uncertainty about the proper scope of the inequitable conduct defense. The Federal Circuit's recent opinion on the subject, Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008), appears to be an attempt to right the ship by reiterating the standards for proving inequitable conduct that were established more than 20 years ago.

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