Defenses – Inequitable Conduct

Inequitable conduct refers to the behavior of the patent applicant during the application process in the United States Patent and Trademark Office (USPTO).  The patent laws require that a patent applicant act with a “duty of candor” when interacting with the Patent Office.  In part, the duty demands that the patent applicant disclose to the US Patent and Trademark Office (USPTO) any information that may be material to the patentability of the invention.  If the applicant knows of such information and intentionally fails to disclose the information, or supplies false information to the Patent Office, the patent could be held invalid or unenforceable.  The patentee should not be allowed to benefit from his or her own bad behavior, and should not be allowed to assert a patent which was obtained through faulty means.

Therefore, in challenging a patent’s enforceability, a patent infringement defendant may allege that the patentee engaged in inequitable conduct in the patent application process and thus cannot enforce the patent.  The defendant would have to show that the information not disclosed was known to the inventor, was “material” to the issue of patentability, and that the inventor acted with an intent to deceive the patent examiner.

Defenses – Antitrust and Patent Misuse

Patent owners have the exclusive right to make, sell or use an object or process during the term of the patent.  However, they do not have unfettered reign over the patented device or process, or its use by third parties.

The patent statutes provide that nothing in the statute shall be deemed to absolve the patent holder from any liability under the antitrust laws.  In connection with using his or her patent, a patent holder may violate antitrust laws, for example, by tying the purchase of unpatented goods to a license for patented goods; or enforcing a patent known to be invalid or fraudulently obtained.

Patent misuse can occur in the following ways:

1. A violation of antitrust laws
2. An attempt to expand the scope of the patent beyond the patent’s claims
3. Engaging in fraud in the procurement or enforcement of the patent.

These actions can be used as a defense against claims of patent infringement.  In some cases where the patentee has acted inappropriately, a court may prevent the patentee from receiving damages even if the patent is found to be valid and infringed.  Again, reflecting the belief that a patentee should not be allowed to benefit from dishonest conduct.