From Volume 84, Number 6 (September 2011)
Inequitable conduct is a unique judicially created doctrine designed to punish patent applicants who behave inequitably toward the public in the course of patent acquisition. Its name alone strikes fear into the hearts of patent prosecutors, and justly so–for when successfully asserted, inequitable conduct can have devastating consequences that reach far beyond a patentee’s case. The need for a systematic empirical study of inequitable conduct jurisprudence has become especially pressing now that the Federal Circuit is reviewing inequitable conduct en banc–in terms so broad as to be unprecedented in the history of the doctrine. This Article reports such a study.
The study reported here provides evidence, inter alia, that the Federal Circuit applies an inequitable conduct standard that is stricter, in other words less favorable to finding inequitable conduct, than that applied by a substantial number of the tribunals it reviews. The Federal Circuit’s stricter standard manifests primarily through the intent to deceive component of the inequitable conduct doctrine. For all intents and purposes, the Federal Circuit has no substantive jurisprudence around the balancing component, and the materiality component is comparatively less impactful than intent to deceive. The court appears to have trouble communicating its stricter standard to lower tribunals. We offer some explanations for why this might be so, and offer some modest suggestions that might advance the inequitable conduct doctrine. In addition, while this Article was in production the Federal Circuit heard argument in and decided Therasense v. Becton, Dickinson & Co., so we have added a brief epilogue addressing some of the implications of the decision that are relevant in view of the findings of this Article.