Inequitable conduct, f/k/a fraud on the patent office, is a defense often raised by defendants accused of patent infringement. Simply stated, inequitable conduct involves either an intentional misrepresentation of material fact to – or an intentional withholding of material information from – the patent office (in layman’s terms: lying or hiding the ball). As a practical matter, the penalty for inequitable conduct is the loss of the patent (if you lie, you die). The courts have been increasingly likely to declare patents unenforceable due to inequitable conduct – until recently.
The Court of Appeals for the Federal Circuit last month focused on the requirement for “clear and convincing evidence” of intent to deceive the patent office (Star Scientific, Inc. v. R.J. Reynolds Tobacco Company et al.), further holding that it would be “inequitable to strike down an entire patent where the patentee only committed minor missteps or acted with minimal culpability or in good faith.” Thus, the Court both raised the bar for finding inequitable conduct and held open the possibility that not all inequitable conduct would result in a loss of patent rights.
This, of course, is good news for patentees. Nevertheless, honesty and candor remain the best policy with respect to conduct before the Patent Office.