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.

Thomas Jefferson, a prolific inventor, was the first patent examiner. (He didn’t spend all of his time with Sally Hemings.)

Abe Lincoln was the only president to be awarded a United States patent. (Al Gore eat your heart out.)

Albert Einstein was once a patent examiner in the Swiss patent office. (He was fired for refusing to get a decent haircut.)

Patent attorneys are reputed to have a great sense of humor. (This may be the most difficult to believe.)

Broadly speaking¹, patent claims may cover either products (article claims) or processes (method claims). Method claims have become increasingly common as inventors seek to patent various methods of conducting business operations, especially conducting business via the internet – the infamous “business method patents.” Infringement of a method claim occurs when each step recited in the claim is performed in the practice of the accused process. Moreover – and an aspect frequently overlooked by both patentees and patent draftspeople,² each step must be performed by the same party.

A recent decision of the United States District Court for the District of Delaware (In Re: `318 Patent Infringement Litigation) has cast new light on the tension between two sometimes conflicting requirements for patent validity: “nonobviousness” and “enablement.”

In order to be valid, a patent must claim subject matter that, as a whole, would not have been obvious, at the time the invention was made, to a person having ordinary skill in the art to which the subject matter pertains.¹

Plaintiffs in patent infringement lawsuits invariably seek a permanent injunction – a court order barring the defendant from future infringement of the patent or patents in suit. Until recently, such an injunction was granted automatically to a prevailing plaintiff. No question.

The patent statute provides that damages for patent infringement begin to accrue when “the infringer was notified of the infringement.” Obviously, it is to the advantage of the patentee to establish the earliest possible date of notice.