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August 19, 2010


Where is the Brief?

Patent Guy:

The brief is now available.


"The brief starts its legal (as opposed to policy) arguments by tracing the origins of the inequitable conduct doctrine to both common law fraud and the equitable principle of unclean hands."

I think it important to stress that many views simply fail at the point that the doctrine was meant to cover more than common law fraud. This explicitly kicks out many of those that desire a strict but-for mentality.

However, the Office brief fails at trying to draw the distinction with its Rule 56 argument - the very things the Office complains about are because practicioners are following Rule 56. The objectivity is a phantom. The Reasonable Examiner is still buried in Rule 56.

While "the Office is in the best position to know what information is essential to determining the patentability of a claimed invention", it is still the applicant that must supply the information, and to a large measure, must supply that information before the Office has made any indication of what may be essential.

Since the applicant must protect herself and her client, it is always better to simply provide more and let the Office decide. Hence the flood.

Two ways to stop this flood: the but-for route with the loss of half of what the intended coverage was meant to be, or stop the requirement altogether. There is only a coarse adjustment mechanism available.

Dear Skeptical:

The second remedy you propose just isn't going to happen - the Supreme Court counts inequitable conduct along with the doctrine of equivalents and the concept of obviousness as its contributions to patent law and in fulfillment of its role as the Constitutional gatekeeper, preventing monopolies except where they are warranted. So any attempt to do away with the inequitable conduct doctrine would last just as long as it took the Court to grant cert and reverse.

The "but for" route is one way, but there are other ways - for example, playing with the remedy such that "the punishment fits the crime" - as argued in PhRMA's and WSLA's briefs, focus the inquiry on the claims asserted in the lawsuit (or any claims reciting elements in common with those claims against which an inequitable conduct charge can be satisfied). This way the defense can be limited, and the consequences limited, to perhaps make assertion of the defense less attractive.

Just a thought. Thanks for the comment.

Kevin - thanks for the correction on the coarse adjustment mechanism.

In fact, that sounds exactly like something the Supremes would push for - the ultimate "each case must be decided on its own facts" rule.

The problem of course, is that such a rule would actually compound the current side effects. Currently, the prong that is typically dropped (the NON-"hard and fast"-"but for" prong) is what actually induces the "cover-your-_ss" behaviour - by adding an even more detailed "punishment fits the crime" aspect, you step even further from any one-size-fits-all brightline rule.

It comes down to the classic brightline/no brightline dilemma.

Hopefully, this brief will help patent law practitioners to eventually be free of the overuse of inequitable conduct charges. Yet another potential nail in the inequitable conduct coffin popped up last week, when Patently-O reported on a new article finding that "[p]atent examiners rarely rely on applicant-submitted prior art when making rejections" -- one potential implication being that "it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway)." The Federal Circuit would do well to pay heed to the chorus of voices criticizing recent inequitable conduct jurisprudence.

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