The Inequitable Conduct Doctrine Of U.S. Patent Laws

The Inequitable Conduct Doctrine is a common law principle of U.S. patent law, and it iscommonly used as a defense to an allegation of patent infringement. In essence, a patent maybe rendered unenforceable for inequitable conduct if an applicant, with intent to mislead ordeceive the examiner, fails to disclose material information or submits materially falseinformation to the PTO during prosecution. Since the first case which created the inequitableconduct doctrine being made, the burden of proof and the standard of test of inequitableconduct have been developing and evolving.In the First Chapter of this article, there is a simple introduction about the basic concept ofthis doctrine, the burden of proof and the standard of test in the past cases, and some debatesabout this doctrine, in order to offer a better demonstration on the status and role of thedoctrine in the patent law of USA.The Second Chapter of this article is about the theoretical basis of this doctrine. Thisdoctrine is based on two foundations, the unclean hands which is also a common law doctrineas a basis in the first case about the inequitable conduct doctrine, and the duty of candor underthe37C.F.R.§1.56(Rule56).The Third Chapter of this article is about the two prongs that must be proved by clear andconvincing evidence by the accused infringer. Regarding the "materiality prong," the accusedinfringer must prove by clear and convincing evidence that there was a failure to disclosematerial information, or a submission of false material information, or an affirmativemisrepresentation of material fact. As to the "intent prong," the accused infringer must furtherprove by clear and convincing evidence that there was an intent to deceive the Patent Office.The district court, in its discretion, then undertakes a balancing of the equities to determinewhether a finding of inequitable conduct is warranted.The Fourth Chapter of this article discusses the results of the judgment and its legal basisand Case law origin. The author attempts to analysis the legal sense of the unenforceable patent and introduces the other punitive consequencesThe Fifth Chapter of this article is about the controversy and challenge of the InequitableConduct Doctrine in the U.S. firstly, the author tries to illustrate the very core of thiscontroversy among the U.S. courts, scholars and the patent holders. Secondly, the authoranalyses the function and the status quo of this doctrine as a judicial public policy during thedeveloping process of U.S. patent law and as a litigation defense strategy in the U.S. patentlitigation.