“There’s a Hole in the Bucket:” The Effective Elimination of the Inequitable Conduct Doctrine,11 J. Marshall Rev. Intell. Prop. L. 717 (2012)

The year 2011 proved to be a momentous year in patent law. The doctrine of inequitable conduct was particularly rocked by changes to the law. Both the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson and Co. and the America Invents Act effectively gutted the inequitable conduct cause of action. Therasense tightened the materiality and intent standards, thus lowering the duty of candor standard that will be enforced in the courts.

The America Invents Act created an escape clause for those who fail to disclose adequately during initial examination through the supplemental examination process. Did Congress and the Federal Circuit overreact to the “plague” of inequitable conduct allegations? This article explores the unintended consequences that may follow from their actions.