New dates and locations coming soon.
Where does legitimate, zealous advocacy before the USPTO end and inequitable conduct begin?
May failing to call the attention of the examiner in one application to an allowance or rejection in a related application before that very examiner constitute inequitable conduct?
Might a practitioner's overstating of the attributes of an invention in a patent specification or amendment be inequitable conduct?
Might the submission of an affidavit or declaration containing truthful statements constitute inequitable conduct?
Might culpable intent sufficient to support a finding of inequitable conduct be found when both the inventor and his patent attorney were unaware of the fact that material prior art was withheld? Might the combination of (1) an inventor’s innocent ignorance of the fact that his prior sales of a predecessor of his patented invention constitutes material prior art; and (2) his patent attorney’s innocent ignorance of such sales nevertheless result in judgment of inequitable conduct?
Might the “highly material” nature of withheld prior art support an inference of culpable intent, without any direct evidence of such intent?
This course explores provocative scenarios such as the foregoing (each of which has been held to constitute inequitable conduct), and dozens more, with a text and lectures rich in analysis of scores of recent, all-too-often inconsistent Federal Circuit opinions.
Other subjects explored at length in the course are the following:
- The Federal Circuit’s inconsistent application of the five different tests for assessing materiality vel non, i.e.,
- the “objective but for” test;
- the “subjective but for” test;
- the “but it may have” test;
- the “reasonable examiner” test embodied in the version of Patent Office Rule 56 from 1977 to 1992; and
- the “prima facie unpatentability/inconsistent argument” test embodied in the version of Patent Office Rule 56 from 1992 to the present.
- Acts and omissions other than those typically found to satisfy the “materiality” requirement prerequisite to an inequitable conduct holding (e.g., withholding material prior art and submitting false affidavits), such as the following:
- Describing a prophetic example in the past tense
- Asserting in the specification that a discovery was “surprising”
- Filing unduly broad claims
- Filing a petition to make special containing an erroneous statement
- Failing to inform the USPTO of a change from small entity status
- Withholding non-prior art publication
- Submitting a declaration containing only literally true statements
- Failing to inform the examiner of an application pending before another examiner
- Failing to name a co-inventor
- Failing to disclose a settlement agreement
- Failing to disclose affiant's relationship with applicant
- Under what circumstances may intent to mislead be inferred?
- How are materiality and intent “balanced” by the Federal Circuit?
- The potential consequences of a finding of inequitable conduct.
- The Federal Circuit's inconsistent application of its standards of review of District Court decisions.