Posts Tagged: "duty of candor"

When you review file histories as a patent office practice expert it’s an eye-opening experience because sometimes it’s almost inexplicable as to what happened and how it could possibly have happened. And that’s what leads to some of the litigation because of the kinds of things that happen in these cases. It demonstrates why there’s still a place for a patent office practice expert in patent litigations due to the eccentricities of the practice and procedure that lead to peculiar results. An expert is needed to explain how and why these situations happen in the PTO… Sometimes you shake your head in terms of how one thing happened after another that led to a particular result that is defies how proper PTO practice and procedure is defined in the rules of practice and the MPEP.

In partially dissenting, Judge Newman’s beef with per curiam panel opinion on the small entity status issue was in “declin[ing] to correct the district court’s ruling that improper payment of the small entity fee is material to patentability.” Newman’s view that filing of an incorrect small entity statement doesn’t render it per se “material” is based on the 1928 Supreme Court case of Corona Cord Tire Co. v. Dovan Chemical Corp. which Newman said had made immaterial to patentability “an affidavit that was not the basis of the patent grant.” Put differently, Newman characterized Therasense as reiterating that the doctrine of inequitable conduct “should only be applied in instances where the patentee’s misconduct resulted in the unfair benefit of receiving an unwarranted claim.” In other words, Newman viewed a potentially incorrect assertion of small entity status as being “immaterial to the patent’s issuance.” But she found the per curiam panel’s opinion as being equivocal “on materiality and intent based on error in small entity status” and thus “simply add[ing] uncertainty when such is unwarranted.

In view of Therasense, the Patent Office is proposing to revise the materiality standard for the duty to disclose information to the Office in patent applications and reexamination proceedings. It is the belief of the Patent Office that the Therasense standard will reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, thereby reducing the incentive for applicants to submit marginally relevant information to the Office. Thus, the Therasense standard should curtail the practice of filing Information Disclosure Statements that refer to boxes full of prior art that is of marginal significance, allowing patent examiners to focus on that prior art that is most relevant. The USPTO adopting the Therasense standard could, as a result, lead to improved patent quality and even a streamlining of prosecution in at least some cases.

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.

Judge Rader wrote: “Left unfettered, the inequitable conduct doctrine has plagued not only the courts but also the entire patent system.” Chief Judge Rader would go on to say that materiality is a “but-for” test, and actually breathed real life into the intent requirement, saying: “Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” The Federal Circuit did decline to adopt the USPTO version of the duty of candor outlined in Rule 56, which I have advocated for, instead opting for an even better, more patentee friendly standard than I myself have advocated for over the years. Today is a good day no doubt. Intent now actually requires intent, and a reference must actually be material in order to satisfy the materiality requirement. What a radical concept!

Realistically, I understand full well that it is unlikely that Congress will bother themselves with reform efforts that are sensible, at least at the moment. It is also unlikely that innovators will be adequately represented in any reform efforts once they do arise. It seems that the power structure in Washington, D.C. believes that the term “innovator” and “big business” are synonymous, which surely they are not. It is also unlikely the Senate will move beyond the legislation Senator Leahy wants so badly but can’t seem to move. Thus, if we really want sensible reform that actually raises up the Patent Office and guarantees the value of patents for innovators we need to be ever vigilant.

The United States Patent Office announced on March 13, 2007 that it had just issued the first patent granted under the then newly minted accelerated examination program, which was first brought into effect in August of 2006. The patent in question, , U.S. Patent No. 7,188,939, was granted to Brother International, Ltd. from an application filed on September 29, 2006,…

Dr. Chris Mammen On August 4, 2009, the Federal Circuit decided Exergen Corp. v. Wal-Mart Stores, Inc., et al., Case Nos. 2006-1491, 2007-1180 (Fed. Cir. 2009). In a post to this blog several months ago, I argued that Congress, the Supreme Court or the Federal Circuit should reform the doctrine of inequitable conduct this year, to rein in the resurgent…

Those who are not familiar with patent law should not comment on patent law as if they are experts, announcing ridiculous propositions that they don’t understand.  It is silly for the many commentators and journalists out there to think that they can read a little about patent law and become conversant in the intricacies, offer opinions and suggestions and portray…