Patent Atomic Bomb Defused

Abstract

This article explains why an appeals court felt the need to reinterpret a disclosure rule that had caused an explosion of paperwork in patent-related cases. In May 2011, the Federal Circuit, in the case of Therasense Inc. v. Becton Dickinson & Co. involving blood glucose test strip technology, changed the standards for proving inequitable conduct. Following this change, a withheld reference must invalidate the patent in order to be material and support a charge of inequitable conduct. A withheld reference that merely presents an argument for invalidity fails as grounds for a charge of inequitable conduct. So long as the non-cited article does not disclose or render obvious the patented invention, the article is not material. Even if the article is material, that alone is not enough. The accused patent violator must also prove that the reference was knowingly and deliberately withheld. The patentee does not have to provide an explanation for the missing information.