Ethics and Patent Law

by Todd L. Juneau, Esq.by Todd L. Juneau, Esq.by Todd L. Juneau, Esq.

Inequitable Conduct• Therasense: Intent (show intent to deceive by clear and convincing)

and Materiality (reference was “but-for” material to the grant by a preponderance of the evidence).

• Post Therasense– Specific intent to deceive must be the single most reasonable inference.

Aventis• Inventor saw the reference and inventor had learned valuable information from the

reference. (negative experiments)• Failure to cite still viable

– Reference in front of PTO in a family member and was not deemed material Bard Peripheral Vascular Inc.

– Failing to fix a petition to make special is not inequitable conduct Powell. See also Small Entity Status, Pending litigation

– Requiring but for material or egregious misconduct August Tech. Corp.– Moving party must recite facts that a specific individual both knew of

invalidating information that was withheld from the PTO and withheld that information with a specific intent to deceive Delano Farms Co.

Supplemental Exam• 35 USC § 257 (c)(1) A patent shall not be held

unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent.

• Patent may be cleansed but what happens to the practitioner– Did the practitioner knowingly violate or cause a duty

of disclosure to be violated

OED• OED and the AIA– Initiate a disciplinary proceeding no later than “one year

after the date on which the OED Director receives a grievance. . . .” 37 C.F.R. § 11.34.

– A grievance must be filed within ten years of the occurrence of the misconduct on which it is based. The rules define grievance as “a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner.” 37 C.F.R. § 11.1.

• OED reach to extend?– Patent Litigation? Reciprocal Discipline? Anything

prejudicial to the administration of justice?

Jurisdiction over Malpractice• Recent cases have split when determining whether patent

malpractice cases “arising under” the patent laws are the province of state or federal courts

• 28 USC § 1338 (a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents ... No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents

• Example cases– Gunn v. Minton: Tx Supreme court indicated that the claim required resolution

of substantial question of patent law. (Experimental use)– Minkin v. Gibbons P.C: N.J. Law requires that the plaintiff prove that better

representation would have resulted in a better outcome.  As such, the case requires analysis of patentability of a hypothetical claim and thus raises substantial a question

– Minkin v. Gibbons P.C: Patent law issue already decided and therefore case does not arise under patent law. (Patent was unenforceable at the time of the settlement)