Dishonesty, failure to disclose material information, or egregious misconduct during prosecution of a patent before the United States Patent and Trademark Office, all of which constitute inequitable conduct, could potentially ignite what the Federal Circuit has dubbed an “atomic bomb” resulting in unenforceability of a patent in-suit and perhaps an entire patent family. For a long time, the doctrine of inequitable conduct was muddled, causing patent-holders uncertainty when acquiring patent portfolios they did not prosecute themselves and doubt regarding the enforceability of their own patents despite years of costly prosecution and R&D. Fortunately, the Federal Circuit recently clarified the test for inequitable conduct—hopefully limiting the range of its ramifications.
The Federal Circuit case Therasense, Inc. v. Becton, Dickinson & Co. sheds light on the two prerequisites of inequitable conduct: (1) misrepresentation or omission of material information with (2) a specific intent to deceive the USPTO. “Intent” requires that the applicant knew of the information, knew it was material, and made a deliberate decision to withhold it. Information is “material” if the USPTO examiner would not have allowed a claim had he or she been aware of the information. Materiality need not be proved if the applicant engages in affirmative, egregious misconduct during prosecution.
A patent applicant has to wonder: what things do I need to tell my attorney (and ultimately the USPTO) in order to avoid the potentially drastic consequences of a finding of inequitable conduct? The following is a checklist of sorts to help you minimize the risk of inequitable conduct.
An applicant will not be entitled to a patent if he or another publicly uses an invention prior to submitting an application, making public use “material” to patentability. In the following examples of public uses, the key is whether the inventor kept “control” over the invention.
Sale/Offer for Sale
If an invention has been placed on sale (meaning it has been 1. offered for sale and is 2. ready for patenting) then applicants need to disclose this to their attorneys because it may bar patentability. Generally, the test for whether an invention has been “offered for sale” comes from contract law—was there an offer that could be made into a binding contract simply by the other party’s acceptance? “Ready for patenting” does not necessarily mean the invention is reduced to a working prototype; drawings or models that allow a skilled person to make the invention suffice. Here are examples of what does NOT constitute something being on sale:
Patented/Described in Printed Publication
If an invention has been patented or described in a printed publication in the U.S. or abroad more than one year prior to the application, or any time before the applicant invented the invention, the applicant may not obtain a patent. There is not much applicants can do to prevent another from publishing about or patenting the same invention, but they can make sure to disclose their own publications to their attorneys. The following constitute printed publications:
The following are NOT printed publications, but applicants SHOULD still disclose them to their attorneys to comply with their duty of disclosure to the USPTO:
Oaths and Declarations
Applicants also need to be truthful in making statements to the USPTO regarding inventorship and details of the invention regarding novelty and non-obviousness. The following are situations in which applicants need to be extra-careful:
Miscellaneous Things that Must be Disclosed
On July 1st, Emily Hinkens joined Andrus’ Milwaukee office as a first-year associate after graduating from Marquette University Law School in May. Prior to this, Emily earned a degree in civil engineering from Northwestern University, practiced at a local survey and engineering firm, and interned at Andrus for two summers during law school. Currently, she focuses her legal practice on domestic and international patent prosecution in the civil and mechanical engineering fields.