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PTO Studying Therasense v. Becton Decision; Guidance Soon

Written by U.S. Patent and Trademark Office
Posted: May 26, 2011 @ 3:49 pm
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Washington – Today the United States Patent and Trademark Office (USPTO) announced that it is carefully studying the important en banc decision by the U.S. Court of Appeals for the Federal Circuit in the case of Therasense v. Becton, Dickinson to assess how it may impact agency practices and procedures. The agency also announced that it expects to soon issue guidance to applicants related to the prior art and information they must disclose to the Office in view of Therasense.

“We are now studying the potential impact of Therasense v. Becton, Dickinson on Office practice, and we expect to soon issue guidance to applicants regarding the materials they must submit to the Office under their duty of disclosure,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

The Therasense decision concerns the standards for inequitable conduct, including the materiality and intent prongs. The Court’s decision resolves uncertainties in many aspects of how district courts must apply the inequitable conduct doctrine. It also directly affects applicant behavior in front of the USPTO and, in particular, their disclosure of information relevant to the patentability of their inventions.

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  1. Great work Gene – I noticed in your email call for action (this very morning) from the Office to align with the decision and it is nice to see that the Office recognizes who you are and respects your wisdom.

    But there is one somewhat important correction regarding your comment of “[The Theresense decision] also directly affects applicant behavior in front of the USPTO and, in particular, their disclosure of information relevant to the patentability of their inventions.” because no such direct effect is made – Rule 56 still applies and does so exactly as it did prior to the decision until the Office changes it. – Hence, the Director actually has to affirmatively do something to change it for there to be any effect.

    Oh wait. That was Hal Wegner that put out that call for the Office to re-evaluate in light of the Therasense decision.

    My apologies to all.

    ;-)

  2. What good news that the CAFC is finally making a concrete effort to, as Dennis Crouch put it, “cure the ‘plague’ of inequitable conduct pleadings.” It’s pretty major that a finding of inequitable conduct no longer automatically serves to invalidate a patent. That part of the ruling should itself prove quite effective in immediately reducing the number of IC pleadings in patent litigation. Bravo. 
    http://www.youtube.com/watch?v=YZT-WQI3SfI&feature=related