АҚШ патенттері бойынша адас тұғырлы мәлімдемелер

Deceptive submission of information relating to United States patents

In United States patent law, inequitable conduct is a breach of the applicant's duty of candor and good faith during patent prosecution or similar proceedings by misrepresenting or omitting material information with the specific intent to deceive the United States Patent and Trademark Office. A claim of inequitable conduct is a defense to allegations of patent infringement. Even in an instance when a valid patent suffers infringement, a court ruling on an allegation of infringement may exercise its power of equitable discretion not to enforce the patent if the patentee (the patent owner) has engaged in inequitable conduct.

The U. S. Patent and Trademark Office's Rule 56 explains that patents are "affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability." Accordingly, each individual person "associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability."

The unclean hands cases of Keystone Driller v. General Excavator, Hazel Atlas v. Hartford, and Precision v. Automotive formed the basis for the doctrine of inequitable conduct that developed and evolved over time.

In the 1944 Hazel Atlas case, a patentee's attorneys also manufactured and suppressed evidence in support of a patent application by hiring an expert to publish an article in a trade journal under his own name praising the invention as a remarkable advance in the art. After the patent was approved and issued on that basis, the patentee brought an infringement action against Hazel Atlas but was unsuccessful in the trial court, so the patentee then appealed the matter to the Third Circuit where the patentee introduced the procured trade journal article. That appellate court reversed the trial court and ruled for the patentee, after which Hazel Atlas settled on the infringement claim, and the patentee then paid the expert more money. The patentee's lies were discovered, however, in US v. Hartford Empire, whereupon Hazel Atlas petitioned the Third Circuit to reconsider its prior decision, and although it refused, the Supreme Court didn't and reversed, vacating the appellate court's decision and the judgment against Hazel Atlas, and reinstating the trial court's original judgment dismissing the patentee's case.

In the 1945 Precision case, the patentee suppressed evidence of perjury before the PTO and attempted to enforce the perjury tainted patent. In the application to the PTO the patentee claimed false dates of conception, disclosure, drawing, description, and reduction to practice, and then testified to the veracity of the same lies in an interference proceeding. The competing patentee discovered the truth, but procured rights to the patent by private settlement, complicit in the scheme, and then sought to enforce the patent against others. In a later enforcement action, a trial court learned of the facts and ruled against the patentee based on the patentee having unclean hands, but the Seventh Circuit appellate court reversed, and on further appeal, the Supreme Court reversed, reinstating the trial court's decision.

In the 2007 case McKesson v. Bridge Medical, the Federal Circuit Court of Appeals found inequitable conduct because a patent attorney failed to provide to patent examiners information from an office action in a related case. McKesson is a cautionary tale for patent applicants: be overly inclusive with patent submissions to ensure no omission will jeopardize a patent.

However, a subsequent CAFC decision seems to directly contradict the standard used in McKesson. In the 2009 case Exergen Corp. v. Wal Mart Stores Inc. and S. A. A. T. Systems, SAAT attempted to defend with a claim of inequitable conduct, alleging Exergen was aware of two earlier patents that it did not cite to the examiner during prosecution. The district court denied SAAT's motion for inequitable conduct as a defense, however, holding that SAAT's allegations were not specific enough to meet the particularity requirement of FRCP 9(b). The Federal Circuit Court of Appeals upheld this ruling, and ruled that such allegations must specify who engaged in inequitable conduct, what precisely that person knowingly withheld or misstated to the PTO, and how the omission or misstatement affected the patentability of individual claims. The court opined that inequitable conduct is not a "magic incantation to be asserted against every patentee" by a "mere showing that art or information having some degree of materiality was not disclosed". One commentator remarked that this change has led to a "virtual alignment of inequitable conduct and Walker Process  fraud that was accomplished by Therasense." Under the new standard, the Court of Appeals found no inequitable conduct in Powell v. Home Depot USA, Inc