Expanding Standards of Inequitable Conduct: Increased Burden of Disclosure on Patent Applicants

This article by Finnegan attorneys James W. Edmonson and Ming-Tao Yang, and Raymond M. Gabriel,  discusses the recent decisions from the Federal Circuit that have left the impression that it is becoming easier to succeed on an inequitable conduct defense, which renders patents, not just certain claims, unenforceable. They state that these decisions have found inequitable conduct based on omission by a non-inventor corporate president and contradictory statements made in foreign prosecution. Edmonson, Yang, and Gabriel examine two cases, Avid Identification Sys., Inc. v. Crystal Imp. Corp., 603 F.3d 967 (Fed. Cir. 2010) and Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289 (Fed. Cir. 2010), as examples of an increased burden on patent applicants. Under Avid, applicants should take a broad view on who is substantively involved in prosecution and shield non-inventor corporate actors from prosecution. Under Therasense, applicants must facilitate communications between U.S. and non-U.S. prosecution counsel or bring foreign prosecution statements to the U.S. counsel's attention. However, they state that the Federal Circuit's recent order to rehear Therasense en banc, indicates that it could modify the current standard. The authors close with a word of caution that until the current standard is modified, applicants operating under the current law and these decisions need to understand who is subject to the duty of disclosure and what needs to be disclosed.