Fletcher YoderDisclosure of a prior art reference to the PTO, when that reference is mischaracterized during prosecution, is insufficient to protect a patentee from a finding of materiality of that reference with respect to inequitable conduct.
Obscuring and withholding evidence of a pre-critical date offer for sale renders a patent unenforceable for inequitable conduct.
A strong showing of objective indicia of non-obviousness may not overcome a stronger prima facie case of obviousness. Further, clear and convincing evidence is needed for an inequitable conduct charge.
Revival of lapsed patents.
Failure to disclose a material action, which potentially triggers the on-sale bar, with specific intent to deceive the PTO may constitute inequitable conduct, which renders any resulting patent unenforceable.
Inequitable conduct based on failure to disclose material references and litigation misconduct
A party seeking to prove inequitable conduct must show by clear and convincing evidence that an applicant made misrepresentations or omissions material to patentability, that the applicant did so with the specific intent to mislead or deceive the USPTO, and that deceptive intent was the single most reasonable inference to be drawn from the evidence.
Federal Circuit affirms a finding of a patent invalid due to obviousness, a finding that the patent is unenforceable due to inequitable conduct, and a Walker Process antitrust award
It is unresolved whether an incorrect claim of small entity status under 37 C.F.R. § 1.27(a) qualifies as information material to patentability. However, where there is no evidence that small entity status was deliberately falsely claimed, underpayment of the application fee can be remedied by payment of the deficiency, rather than eradication of the patent. If immaterial to the patentability of the application, litigation related to the application need not be disclosed.
In correcting a false declaration, the Applicant must expressly advise the PTO of the misrepresentation’s existence, stating specifically where the misrepresentation resides. It does not suffice that when an Applicant knows of misrepresentations, the Applicant merely supplies the PTO with accurate facts without calling his attention to the untrue assertions sought to be overcome.