Inequitable conduct is an equitable defense to a charge of patent infringement. It renders the entire patent unenforceable and leads to many other nefarious consequences, like having to pay an alleged infringer’s attorneys fees, damaging the career of patent attorneys, and endangering a company’s entire patent portfolio. Chief Judge Rader of the United States Court of Appeals for the Federal Circuit has called inequitable conduct the “atomic bomb” of patent law.

Many practitioners and commentators have observed recently that inequitable conduct claims are too ubiquitous. One study reported that inequitable conduct is asserted in 80% of patent infringement cases. Several Federal Circuit judges have referred to inequitable conduct as a “plague.” In view of these concerns, last year the Federal Circuit ordered a sweeping review of the inequitable conduct doctrine in Therasense, Inc. v. Becton Dickinson and Co.

On May 25, the Federal Circuit issued its decision in Therasense and significantly raised the legal standard required to prove inequitable conduct. Before Therasense, an alleged infringer had to show that the patent applicant misrepresented or omitted material information with intent to deceive the PTO.

Please see full Alert below for further information.