Limitation of Inequitable Conduct

The PIA Viewpoint

Courts have long been viewed as being best able to resolve highly factual questions such as intent to deceive. The bill curtails the defense of inequitable conduct – intentional acts and omissions of a patent applicant (or its representative) during the course of obtaining a patent from the Patent Office – by allowing it only to be pled where the court has first invalidated a claim and the accused infringer (defendant) has a reasonable basis for alleging that a reasonable patent examiner would not have allowed the invalidated claim. In other words, the defense would not be available to a defendant until it has already won the case. Moreover, if the inequitable conduct is claimed, the matter would be referred to the USPTO and leave sole determination in the office with no right to appeal.