Inequitable Conduct - Specifics

Specifics

Inequitable conduct occurs when a patent applicant breaches the applicant's duty of candor and good faith to the US Patent and Trademark Office while applying for a patent. This breach can include:

(a) failure to submit material prior art known by the applicant;

(b) failure to explain references in a foreign language or submit pre-existing full or partial translations of the references;

(c) misstatements of fact, including misstatements in affidavits concerning patentability; and

(d) mis-description of inventorship (authorship).

See Therasense, Inc. v. Becton. A reference is material if "there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent."

The party asking the court to decline to enforce the patent, usually the alleged infringer, bears the burden of proving inequitable conduct to the court. The moving party must show by clear and convincing evidence that the patentee intentionally withheld or misrepresented information, and that the information was material. Proven inequitable conduct in any claim can expose the entire patent to unenforceability.