Patent attorneys, inventors and anyone else substantively involved in the prosecution of a patent application owe a duty of candor to the U.S. Patent & Trademark Office (PTO).  Inequitable conduct may lead to a judgment that the patent is “unenforceable.”

The Federal Circuit in Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d at 1357, 1365 (Fed. Cir. 2008) held that a party alleging inequitable conduct must prove by clear and convincing evidence:

  • someone made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information; and
  • intended to deceive the USPTO.