Fraud on the Patent Office Archive

In what in all likelihood will drastically change not only patent litigation but also patent prosecution, the Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Co. restated the standard for patent inequitable conduct. This retooling of inequitable conduct will likely reign in the use of the doctrine in patent litigation as a standard trial strategy even when no actual inequitable conduct occurred. The patent in question centered on “disposable blood glucose test strips.” According to the patent, the test strips, which test whole blood, have an electrochemical sensor “without a membrane over the electrode.”

During prosecution of the application, the applicant, originally Therasense, Inc. but now Abbott Diabetes Care, Inc. (“Abbott”), in order to illuminate the state of the prior art, supplied upon request an affidavit to the U.S. Examiner stating that Read the remainder of this entry »

The Federal Circuit Court of Appeals issued a ruling in Avid Identification Systems, Inc. v. Crystal Import Corp. on April 27, 2010 that serves as a reminder to all of the importance of absolute honesty with the US Patent and Trademark Office. In their opinion the Court held Avid Identification System, Inc.’s patent (US Pat. No. 5,235,326) valid and infringed, but not enforceable because Avid’s president failed to disclose his demonstration of a precursor product at a tradeshow more than one year before the filing date. The Court reasoned that although the President is not among the inventors, the Rule 56 duty of candor and good faith extends to him because he was “substantively involved” with preparing the patent application. More specifically, his involvement included conceiving the invention, which he then turned over to his employees to reduce to practice, and being copied on communications regarding the invention.

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