Posted on 26/5/2020

False declarations and unenforceable patents in the US

A mistake in naming inventors rendered a US patent unenforceable.

Even for those applicants with experience of patent prosecution here in the UK, the rules, and consequences for non-compliance, for applications in foreign jurisdictions can come as a shock.

One such rule is that of “equitable conduct” before the US Patent Office, and a recent case before the United States International Trade Commission (ITC) reminds us of the importance of this rule.

Equitable conduct is a principal without an equivalent in the UK but is important when applying for a patent in the United States as the consequences for failing to comply can be substantial, with the entire patent potentially rendered unenforceable for what might be looked at as an error in formalities in the UK.

Inequitable conduct generally requires a showing of (1) specific intent to deceive the Patent Office and (2) “but-for materiality”, meaning that the patent would not have issued but for the misrepresentation or omission.  However, the Federal Circuit has also recognized an exception to the materiality requirement.  “Affirmative acts of egregious misconduct,” such as filing an “unmistakably false affidavit,” has been held to be material even if the misconduct would not have influenced the issuance of the patent.

In re Certain Child Carriers and Components Thereof, believing (mistakenly) that having a U.S. citizen as a named inventor on their patent would bolster the protection provided, the inventor and her husband filed signed Inventor’s Declarations stating they were both co-inventors despite knowing this to be false.

Even though they sought to correct the inventorship by removing the husband prior to proceedings before the ITC, it was found that in filing the original, unmistakably false declaration to the USPTO, the applicants had conducted themselves inequitably before the USPTO and rendered the patent unenforceable against an infringer.

When considered from the UK perspective, this result appears harsh – a mistake in naming inventors (even if deliberate) can normally be corrected and an action for revocation of a patent because the proprietor is not entitled to it, can only be taken by the rightful owner, not by an unrelated infringer.  It is important, therefore, to be aware that foreign patent laws can be different and stricter than ours; whilst we cannot expect to know the rules of every country, we ensure we keep up to date on the laws of the countries our clients work in, and of course we work with a network of trusted agents who help us and you to negotiate different systems.

If you have any questions about patent prosecution in the UK or overseas, please get in touch to speak to one of our attorneys.

Wilson Gunn