Are We Living in a Material World?: An Analysis of the Federal Circuit's Materiality Standard Under the Patent Doctrine of Inequitable Conduct

AuthorElizabeth Peters
PositionJ.D., The University of Iowa College of Law

J.D., The University of Iowa College of Law, 2008; B.S., Industrial Engineering, Purdue University, 2005. I would like to thank my mom, dad, husband Brad, Chelsea, Cally, and Cosby for their support on this piece, as well as Professor Mark Janis for his advice and insight on the topic.

Page 1522

I Introduction

In patent law, as in many areas of law, courts engage in a legal analysis of the facts at hand, but supplement this legal analysis with equitable principles when policy and fairness require a different outcome than strict application of the law can provide. The primary use of equity in patent law is the doctrine of inequitable conduct. The doctrine focuses on the patent applicant's actions during the process of obtaining a patent.1

The patent-application process entails filing an application with the U.S. Patent and Trademark Office ("PTO"), a government office that specializes in determining whether to grant patent protection for an applicant's alleged invention.2 The application process involves the PTO and applicant only-without any influence or inquisition from outside sources.3Because an issued patent creates a right to exclude others from making or using an invention, requiring an applicant to conduct himself equitably while obtaining that right ensures fairness in the patent system as a whole.4Fairness is important because the patent community inherently trusts that a patent-holder rightfully obtained the patent because of his efforts and thus has a right to enjoy the economic advantages of the patented invention free from others' interference.5 Without the assurance of fairness, the protection afforded by a patent would be much less valuable. Therefore, the doctrine of inequitable conduct is a vital part of preserving the value that our patent system contributes to society.

This Note focuses on a critical aspect of the inequitable conduct doctrine: the standard that courts use to decide if unfair actions taken by an applicant while obtaining a patent are important or "material" enough to constitute inequitable conduct. In addition, the Note analyzes the past and current trends of this standard, as well as recent legislative proposals, policies, and considerations affecting the standard. The Note then reviews Page 1523 how possible PTO changes regarding the patent-examination procedure could affect the inequitable conduct doctrine and its "materiality" standard in the future. The Note concludes with recommendations for revising the current standards in light of these potential changes and general policy considerations to ensure clarity and equity under current and future patent regimes.

The following hypothetical example serves as a helpful reference for understanding the concepts in this Note and analyzing the basics of inequitable conduct and its "materiality" component. Let's say Anne had been toying around with an idea for a new and improved retractable dog leash. She came up with a few drawings and sent them into a contest sponsored by a pet magazine. The magazine chose three winners, including Anne, and featured their designs in a three-page piece in its monthly publication.

After reading the article, Brad decides to create his own design of a new retractable leash, incorporating several elements from Anne's leash into his design. Brad, thinking that the leash could be a real success, subsequently files a patent application with the PTO for the leash. He does not inform the PTO about the magazine article or Anne's leash ideas. The PTO eventually grants Brad a patent, which gives Brad exclusive rights to exclude others from making or using his patented retractable leash.6

Five years later, Brad is walking through a pet store and sees a retractable leash made by a third designer, Chelsea. Brad thinks that the leash has features very similar to his and, seeing the price, realizes that Chelsea is making quite a profit from selling the leash. He decides to sue Chelsea for infringement, claiming that her leash violates his exclusive patent-protection rights.

In response to this accusation, Chelsea likely would engage in a two-step defense. First, she would argue that her leash does not infringe upon Brad's patented leash under any theory of patent infringement.7 Next, Chelsea will argue that she has an affirmative defense even if her leash does infringe upon Brad's patent. She would assert that Brad's patent is unenforceable because, as she has discovered, he did not inform the PTO about Anne's retractable leash idea that he read about in the magazine. This affirmative defense is an example of the defense of inequitable conduct. Thus, the Page 1524 viability of Chelsea's defense will largely depend on how the doctrine of inequitable conduct is interpreted and applied by the courts.

Part II of this Note describes the general doctrine of inequitable conduct as it applies to patent applicants prosecuting patents before the PTO.8 Part III explores the background of the "materiality" requirement- the requirement that a court can only find inequitable conduct if the information withheld from the PTO is material.9 This Part analyzes the history of the materiality doctrine and the recent cases that have addressed it.10 Part III also discusses current trends in legislative proposals that could shed light on the future of the materiality doctrine if Congress decides to create a statute addressing inequitable conduct.11 Part IV analyzes the underlying policy considerations of the inequitable conduct doctrine against the different variations of the materiality standard.12 Additionally, this Note explores a possible change the PTO could adopt regarding a patent applicant's duty while prosecuting patents.13 This change would affect the doctrine of inequitable conduct by increasing the burden of disclosure on an applicant, and Part IV explores which materiality standard would best meet that change.14 Finally, this Note concludes with suggestions for reforming the doctrine, taking into consideration the policies underlying the doctrine and the possible PTO changes.15

II Overview Of Inequitable Conduct
A An Applicant's Duties At The PTO

The process for obtaining a patent in the United States is based on an ex parte system of evaluation.16 Those wishing to obtain a patent submit an Page 1525 application to the PTO, where examiners will undertake an evaluation to determine if the claimed invention is ripe for patent protection.17 Normally, a patent application involves multiple claims, each of which a patent owner can use to bring an infringement suit.18 During this period of evaluation, called "prosecution," the examiner will evaluate each claim of an application to determine if the invention meets the four requirements for patentability. To receive a patent, an alleged invention must be: (1) patentable subject matter,19 (2) useful,20 (3) novel,21 and (4) nonobvious.22 The examiner engages in this analysis without any influence from the public or other parties interested in the invention.23 During this examination, an examiner Page 1526 reviews the application in light of a myriad of information, including previously created documents, prior patents, the inventor's statements, litigation that may involve the patent, other pending applications, and anything else that may affect one of the four patentability requirements.24

Current PTO procedures do not require a patent applicant to disclose all possible information that the applicant knows of that may be related to the patent or to conduct a search of prior documents (called "prior art"25) for unknown information that could contribute to the examiner's evaluation of the four patentability requirements.26 However, because of the ex parte nature of patent prosecution and the valuable assets accruing from patent rights, the PTO imposes on applicants a "duty of candor and good faith" to adequately...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT