The shadow of inequitable conduct in the US patent application

Abstract

Inequitable conduct regarding any single claim can render the entire patent unenforceable and further damage other related patents and applications in the assignee's patent portfolio. The adverse impact of inequitable conduct significantly became a litigation strategy. The US Federal Circuit (CAFC) observed that inequitable conduct as a patent litigation strategy had become a plague and thus tightened the standard for finding inequitable conduct in a case with full court judges. However, under the shadow of previous adverse impact of inequitable conduct, patent applicants may still submit many marginal related references. This study demonstrates that an applicant even prepared an information disclosure statement (IDS) as many as 50 pages. Actually, under the new standard, inequitable conduct would not further produce significant impact in the US patent system. Thus, a patent applicant need not submit marginal references but should distinguish the prior art from the current application, especially for those listed in the IDS, to avoid the novelty rejection.

Keywords: inequitable conduct; information disclosure statement; intent; materiality; patent portfolio.