As the reader undoubtedly knows – or should know – applicants for patents and their attorneys owe a duty of candor to the patent office. As part of this duty, they are obligated to disclose to the patent examiner all material prior art of which they are aware. That sounds fine, but exactly how far does that duty extend? If a patent examiner has been directed to consider a certain apparently pertinent prior art reference, but inexplicably fails to do so, is it the duty of the applicant’s attorney to bring this failure to the examiner’s attention? Stated another way, is it inequitable conduct if the attorney does not bring this matter to the Examiner’s attention? The answer is both NO and MAYBE YES. (It’s decisions like this that keep lawyers in business.) Tyco Healthcare Group LP v. Applied Medical Resources Corp.
The Court initially held that there was no “rule that imposes on counsel an obligation to point out to the Examiner the ways in which he or she¹ (emphasis added) thinks the Examiner might be wrong … the court is unaware of any authority that requires [applicant’s attorney] to either analyze the examination process for flaws and inform the Examiner of his mistakes, or be charged with inequitable conduct.”
Sounds like the attorney did not breach his duty by failing to notify the Examiner of the apparent oversight, right? Wrong! The court went on to hold that there was “little, if any, evidence” of an intent to deceive, but “because the overall determination of inequitable conduct is a sliding scale, where more evidence of materiality means less evidence of intent to deceive is permissible,” the court declined to grant summary judgment in favor of the patentee. Thus, the accused infringer (slimeball) will have an opportunity, at trial, to prove that the attorney did breach his duty and was guilty of inequitable conduct.
THE LESSON TO BE LEARNED: (1) the prudent course of action is, if you see that the Examiner has overlooked a reference or made a mistake, bring this to his attention; and (2) do not rely on case summary headlines (the summary headline in this case reads “Attorney Does Not Have To ‘Do The PTO’s Job For Them’”).
¹ While this decision is inconsistent, it is politically correct.