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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Inoculate Your Patents from Inequitable Conduct Allegations?

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One of the crowd pleasers built into the revised S.515 is the ability to effectively cure mistake and/or oversight in original patent prosecution.  Such inadvertant issues can currently serve to jeopordize an otherwise valid patent.  With the Federal Circuit struggling to get their arms around the never ending saga that is inequitable conduct jurisprudence, Congress appears poised to provide some much needed relief by way of the revised Patent Reform Legislation.

For example, in Section 10 of the Bill, Chapter 25 of title 35, United States Code, would be amended by adding a new section 257 to permit the patent owner to request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to its patent.  The Director would then have 3 month to determine whether the information presents a substantial new question of patentability (SNQ).  If an SNQ is found to exist, the supplemenatl examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices).  Once the supplemental examination concludes, the issues brought before the Office in the second examination cannot be used to attack the patent based upon their absence in the original examination.

If there is no SNQ the Director will issue a certificate essentially cleansing the patent against unenforceability, unless an allegation of inequitable conduct was pled with particularity before the filing of the request for supplemental examination in a civil action, ANDA litigation or ITC action.  Under current law, inequitable conduct cannot be cured through reissue or reexamination.  Indeed, the reissue oath requires that the error have been made “without deeptive intent.”  Supplemental examination, as currently proposed, will permit the patent owner to cure inequitable conduct resulting from violations of the duty of candor and good faith as well as the duty of disclosure with intent to deceive the USPTO so long as it is done promptly and prior to litigation.

The Director will be able to continue to investigate issues of possible misconduct and impose sanctions such as those set forth in 37 CFR 11.18(c) such as striking a paper; referring a practitioner’s conduct to the Director of Enrollment and Discipline for appropriate action; precluding a party or practitioner  from submitting a paper or contesting an issue; affecting the weight given to a paper; and terminating the proceedings in the Office.  Thus, the idea appears to be directed to gray areas and close calls, as opposed to providing a second bite at the apple for true “villians.”

In a further provision of the revised S.515, the long standing requirement that correctable errors in patent reissue must have occurred “without deceptive intent” is proposed to be deleted from the statute (35 U.S.C. 251).  As can be appreciated, this change would essentially render narrowing reissues and supplemenatl examination largely the same.  The difference being that reissues applicants must identify an error and propose a correction while supplemental reexamination can simply pose a possible SNQ.  Once initiated however, the proceeding would essentially be quite similar (save reissue oath requirements and broadening reissues).

Supplemental examination, and changes to  35 USC 251 are proposed to take effect 1 year after enactment of the Patent Reform Act and apply to patents issued before, on or after that date.  Stay tuned.

One Response to “Inoculate Your Patents from Inequitable Conduct Allegations?”

  1. Paul F. Morgan says:

    Quiry how likely or effective the mere possibility of PTO misconduct investigations will be [especially with no complaint filed]? Especially since the worst cases of inequitable conduct are most often by the inventors or assignees, over whom the PTO has no direct or serious sanction power, because they are not normally registered practioners and thus have no threat to their livelyhood from losing their license to practice?