An outbreak of common sense – “fraud on the US Patent Office” actually requires fraud


[author: Greg Noonan]

Over the last two or three decades, patent attorneys and patent applicants from around the world have been somewhat bemused when at times it seems more important in US patent litigation to argue about whether a patentee had been guilty of “fraud on the Patent Office” (or, more formally, inequitable conduct) than to consider the real issue of patent validity.

One consequence was an inclination to submit prior art references that looked vaguely relevant in case some future Court should hold that a “material” reference had not been notified.  This duty was extended to filing formal information disclosure statements in respect of references that were perfectly visible to a competent examiner in a search report on a PCT application, or discussed in the applicant’s own specification.

The position has changed significantly with the Therasense decision, which requires a “deliberate decision” by the inventor or attorney to withhold the material information.  This in effect requires that “fraud on the Patent Office” entails fraud in the way the concept is understood in most other jurisdictions.

The significance of the Therasense ruling has recently been highlighted in a decision of the US Court of Appeal for the Federal Circuit, 1st Media LLC v Electronic Arts Inc et al, case number 2010-1435 in relation to US patent 5464946.  The Federal Circuit reversed the ruling of the judge that the patent was unenforceable for inequitable conduct, because the conduct involved did not meet the standard required by the Therasense decision.  The judgement held that simply showing that an applicant knew a reference was material, does not establish a “deliberate decision” to withhold the reference.  According to the court, “knowledge of the reference and knowledge of materiality alone are insufficient after Therasense to show an intent to deceive….it is not enough to argue carelessness, lack of attention, poor docketing or cross referencing, or anything else that might be considered negligent, or even grossly negligent”.

Patent attorneys and IP management worldwide can worry less and sleep more soundly.  Perhaps US patent suits will now concentrate on the fundamental issues of infringement and validity.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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