Inequitable Conduct in Recent Federal Circuit Decisions and International Patent Prosecution Jay P. Kesan University of Illinois College of Law

Inequitable Conduct As a Defense (1) Definition Breach of duty of candor, good faith and honesty Elements of inequitable conduct What IC is not PTO does not investigate IC

Inequitable Conduct As a Defense (2) Relationship to common law fraud No right to jury trial Summary judgments based on IC Burden of proof Appellate review

Elements of Inequitable Conduct Careful balancing test – intent and materiality Materiality Knowledge Intent

International Patent Prosecution Appropriate manner and time to file an IDS: Listing requirement Filed separately from specification Copy of each document Timely filing SEL v. Samsung, 204 F.3d 1368 (2000) Li v. Toshiba, 231 F.3d 1373 (2001) Harris v. Ericsson, 194 F.Supp.2d 533 (2002) Marlow v. Igloo, 2002 WL (N.D. Tex. 2002). Careful balancing test – intent and materiality Materiality Knowledge Intent

Does the Inequitable Conduct Defense Make Sense? Imposing a duty to disclose on the better informed party is sound Information-forcing function Incentive to disclose because of reduction in post-issuance invalidation risk Difficulty in setting the right standard to discourage IC assertions in every case without diluting incentive to divulge information.