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Patent Reform Law to Curb Inequitable Conduct Claims

Law360
September 23, 2011

Related Professionals: McNeill, Rebecca M.

Media Mention

In this article, Intellectual property attorneys, weigh in on the recently-signed America Invents Act. The attorneys offer commentary that the new law’s supplemental examination provision, allowing patent holders a chance to correct mistakes they failed to catch during prosecution, will boost the value of the intellectual property and drive down claims of inequitable conduct. According to Finnegan attorney Rebecca McNeill, “If you find documents that should have been submitted to the patent office, it will be easier to address the concerns before the USPTO than in litigation against a hostile alleged infringer...A patent owner will be in a better position to raise issues with the USPTO from both a validity and inequitable conduct standpoint.” Additionally, McNeill finds the provision useful in that it gives a patent owner an effective tool to address investor concerns and creatively negotiate licensing agreements.