Lisa A. Dolak (Syracuse University - College of Law) has posted Inequitable Conduct: A Flawed Doctrine Worth Saving on SSRN. Here is the abstract:
A growing chorus of voices is calling for reform or even elimination of the doctrine of inequitable conduct. Critics argue that innocent or even irrelevant prosecution mistakes can be met with the ultimate penalty: unenforceability of the entire patent.
There is no question the doctrine is in need of repair. Patent owners are subject to different materiality standards in the U.S. Patent and Trademark Office and the courts. Inequitable conduct charges can be based on information completely immaterial to patentability. Findings of deceptive intent are increasingly based on inference and not evidence. And the one-size-fits-all remedy of total unenforceability deprives the courts of the ability to tailor the "punishment" to the offense.
But abrogation of the defense would be a mistake, particularly as concerns about patent quality echo in the USPTO, the Congress, the courts, and the media.
This paper argues that retaining the defense is essential for maintaining the integrity of, and continuing public confidence in, the U.S. patent system. It sets forth specific recommendations for much-needed modifications designed to better serve the doctrine's essential purposes, and to ameliorate the key problems with its current application. Although these changes can be implemented by the courts, legislative action would be more appropriate, because the recommended modifications affect virtually every aspect of the doctrine, and it is unlikely that a given case or series of cases will present appropriate facts for judicial resolution in the near future.