The Federal Circuit U.S. Court of Appeals’ recent en banc decision in Therasense v. Becton, Dickinson makes it harder for courts to refuse to enforce a patent because the inventor or his attorney committed “inequitable conduct” when persuading the patent office to grant the patent. The doctrine of inequitable conduct evolved from old Supreme Court cases that refused to enforce patents where the patent holder had defrauded either the patent office or the courts and persuaded them to grant or enforce a patent they would not have otherwise. The Supreme Court’s decisions were vague regarding the standard for unenforceability, but they were based on both the equitable defense of unclean hands and the doctrine of common law fraud. In the years since, the lower courts expanded the doctrine substantially.

The expansion was well-intentioned. The patent office’s initial decision regarding whether to grant a patent is made in proceedings that involve only the patent applicant. The office has limited time and ability to search for “prior art” that could show the applicant should not be granted a patent because, for example, he is not the first to invent the subject matter. Candor is therefore essential. The applicant is often in a better position to know what prior art exists and whether it is relevant, and so, the thinking went, the law should incentivize total disclosure. This way, bad patents are never issued, and the patents that do issue are of higher quality. The rule was prophylactic, in the same way that the exclusionary rule and Miranda warnings are meant to deter police misconduct.

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