by Jake Meyer

The U.S. Patent System provides incentives for inventors to disclose their inventions in exchange for a limited monopoly, but patent applicants do not always disclose all of the information necessary for an accurate assessment by the U.S. Patent and Trademark Office (USPTO) of whether the patent applicant is deserving of a limited monopoly.  The Federal Circuit (the court that hears all patent appeal cases) currently has an opportunity to insure more complete information is presented to the USPTO when determining whether it should grant a particular patent.

In order for an inventor to obtain a patent, 1) an invention must be useful – the invention must have a beneficial purpose; 2) an invention must be novel – it must be new and have not been previously described to the public elsewhere; and 3) an invention must be non-obvious – the invention must not be a combination of known components or techniques that would be obvious for a person skilled in that area of technology to try together.  When applying for a patent, the applicant must disclose to the USPTO any information related to the invention and relevant to the questions of whether the invention is novel, or whether the invention is obvious.  The applicant must include relevant articles, books, patents, and other materials describing the invention (all of which is known as prior art) in the patent application.

Examiners at the USPTO perform their own searches to find relevant prior art.  However, patent examiners work under time constraints and in some cases a relevant piece of prior art could be missed by the examiner's search.  A missed piece of relevant prior art could result in a patent being granted inappropriately on an invention that is not novel or that is obvious.  Even if a court would ultimately find such a patent invalid, there are costs associated with granting inappropriate patents.  Those who might practice the inappropriate patent could be aware of the patent, and refuse to practice the invention for fear of infringement – chilling possible economic or socially beneficial activity.  Those making, using or selling an invention covered by an inappropriately-granted patent could be threatened by the patent holder with an infringement suit.  Consequently, they could cease the alleged infringing activity rather than paying the costs of a legal battle to have the patent found invalid (the median cost of a patent infringement lawsuit is four million dollars).

One way courts enforce the requirement that relevant prior art is disclosed in the patent application is through the inequitable conduct standard.  A court will find inequitable conduct when a patent applicant fails to disclose materially-relevant prior art and does so intentionally.  Courts apply strong medicine when they find inequitable conduct, declaring the patent unenforceable.

In the case Therasense, Inc. v. Beckton, Dickinson and Co., the Federal Circuit has granted the plaintiff’s petition to hear issues in a patent case relating to inequitable conduct en banc (all members of the Federal Circuit will preside over the decision).  In 2008, the Federal Circuit held in Star Scientific v. R.J. Reynolds Tobacco Co., that the test for whether inequitable conduct has occurred is: 1) whether the party accused of inequitable conduct had the intent to deceive the USPTO, and 2) whether the missing prior art was sufficiently material to the examination of the patent.  Both parts of the test require clear and convincing evidence for a finding of inequitable conduct and the burden is on the party alleging inequitable conduct to prove intent and materiality. 

The Federal Circuit has granted the plaintiff’s petition to hear six issues relating to the inequitable conduct standard in Therasense, and now has an opportunity to replace or modify the standard.  The Federal Circuit should modify the inequitable conduct standard to increase the disclosure of relevant material prior art, increase patent quality, and reduce the burden on patent examiners to search for prior art.  The Federal Circuit should remove the intent requirement and base the inequitable conduct inquiry entirely on the materiality of the prior art.  This new standard would put the burden of searching for material relevant prior art on the applicant.  Applicants, who are in a better position to find relevant prior art than examiners because of their familiarity with the prior art in the field, would conduct more thorough searches in order to avoid a finding of inequitable conduct.  This would result in better disclosure of prior art by patent applicants, and would reduce the workload for examiners under stringent time constraints.  An inequitable conduct standard that does not require a finding of intent would be easier for courts to apply uniformly as the materiality of the prior art would be the only inquiry.  The incentive for better disclosure by the patent applicants would increase overall patent quality.  Further, intent to deceive can be a difficult standard to prove, and revising the inequitable conduct standard to only focus on the materiality of the prior art omitted reduces the chances a patent applicant can commit fraud on the patent office while also making an inequitable conduct standard that is easier for courts to consistently apply.