The American Bar Association (ABA) Section of Intellectual Property Law has submitted comments to the Senate Judiciary Committee on the section’s policies relating to inequitable conduct before the U.S. Patent and Trademark Office.  The Section believes that the defense should be reformed and retained, rather than eliminated in favor of administrative proceedings in the PTO.

The Section believes that the defense of unenforceability of a patent based on inequitable conduct in the United States Patent and Trademark Office (“PTO”) should be allowed only upon proof, by clear and convincing evidence:

(1)  that a person having a duty of candor and good faith to the PTO in connection with the patent or an application therefor knowingly and willfully misrepresented a material fact or material information to the PTO or omitted a known material fact or known material information from the PTO;

(2)  that, in the absence of such misrepresentation or omission, the PTO, acting reasonably, would not have granted or maintained in force at least one invalid patent claim; and

(3)  that the misrepresentation or omission occurred with a specific intent to deceive the PTO, and that such intent cannot be established by the mere materiality of the misrepresentation or omission.

The Section also indicated that, in considering whether to hold a patent unenforceable based on an applicant’s alleged inequitable conduct, courts should not find information to be material if it would not have been material under statutory and regulatory standards applicable during the prosecution of the application(s) for the patent or its reexamination.

The comments are posted at the section web site at IPL Section of the ABA website.

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