Introduction:
Patents are generally a certificate awarded to a person who discovers something new and wants to own leverage over it and allows people to use it only on his/her terms and conditions. Once a person gets a patent over his/her work, other people who wish to use the same need to obtain permission from the patent owner. Once a patent is obtained, the patent owner has full control and ownership over the patented product.
However, even though he or she obtains patent over his or her invention, he/she is expected to submit all information regarding the product and must not be withholding information. If it can be proven in court that the applicant had been withholding information about the patented product, the court can make the patent unenforceable and all other related patents to suffer the same fate.
Therefore, when filing a patent, it is vital that the process is kept transparent and honourable. Also, patents are not supposed to be confused with GI Tags
What Exactly is the Doctrine of Inequitable Conduct and Patent Unenforceability?
When filing for a patent, the applicant is required to make sure that all the information that he knows about the product must be given to the Patent and Trademark Office (PTO). This is because the process of patent obtainment requires two very important things from the applicant- good faith and good candour (the quality of being open and honest[1]). The US patent laws require candour to be a very essential concept from the applicants. Applicants are expected to disclose all information that is in their possession regarding the product they’re patenting and must not intentionally withhold any information. Applicants are also expected to disclose any and all information they obtain after the patent is obtained on a timely basis.
Failure to do so attracts the doctrine of Inequitable Conduct. The doctrine of Inequitable Conduct is a very powerful tool that it must be used judiciously and only when there’s strongly clinching evidence about the malpractice. The doctrine of Inequitable Conduct is used when the petitioner finds that a patent owner has not disclosed all or some information about the patent. The information can be sensitive or irrelevant, but if it is found that the information was undisclosed intentionally, it is a crime.
Using the doctrine of Inequitable Conduct attracts severe liability as the petitioner has the unenviable duty of providing clinching evidence to show that there was voluntary withholding of information. The petitioner has to sift through various documents and it is an expensive and tedious process and is very taxing. But once the petitioner manages to prove to the court that there has been voluntary withholding of information by the patent owner, the doctrine of inequitable conduct kicks in and the patent is no longer enforceable. A far more lasting effect of this doctrine is that any and all patents related to this patent suffer the same fate.
While learning about Doctrine of Inequitable Conduct, it is also necessary that we learn the difference between Patent Unenforceability and Patent Invalidity.
Patent Unenforceability is when the patent owner loses the whole rights to sue people for use of their patent because they no longer own the patent. All patents that are related to this patent also lose its importance and therefore is also unenforceable. This is solely done when the original patent owner intentionally withholds information about the product that they are patenting. If he/she finds new information after the patent is obtained, they’re expected to disclose the information in good faith.
Patent Invalidity is when people find that the product that has been granted a patent for in order to monopolize the effects for the patent owner is non-novel. Here non-novel means that a product or patent exists even before a similar product is submitted to the PTO for patent application. For example, if I apply for a patent of a single sim card having multiple numbers in it and I get it, and if someone discovers that my device has already been patented by someone else before, then my patent is made invalid.
Unenforceability is more significant and punishing than invalidity, although both of them have almost the same effect.
Withholding of information can also pertain to the act of not disclosing the information that a prior patented device exists that is similar to the device that is trying to be patented. The patent owner can counter these allegations by providing new information in court that needs to be read and analysed. This stretches the court proceedings and for this very reason, courts are reluctant in hearing of patent unenforceability[2]. The punishment is severe in nature, all application of the doctrine of inequitable conduct has to be scrutinized carefully.
Elements Required to Establish Doctrine of Inequitable Conduct
As said before, establishing the Doctrine of Inequitable Conduct is a tough process and therefore courts are reluctant in dealing with these cases. However, there are certain elements that can be used to establish the doctrine.
The first would be the showing of information of already existing patent. When filing a patent it is required to show that there are no other similar patents like the one being filed and that the product must be a novel one. One of the most important elements is to show that the patent for the applied product already exists and therefore the more recent patent cannot be considered as a valid patent and needs to be invalidated.
The second would be that intention to withhold information must be shown. This is a tricky one to prove and this requires far more extensive resources to successfully prove that there had been intentional withholding of information. How do you prove that there has been withholding of information? When filing a patent relevant material information needs to be disclosed, like already existing patents. If this information is very much needed in order to obtain a patent and if the applicant has not disclosed the required information, then it can be said (however this doesn’t mean that there was intention albeit it can be used as proof to complement the accusation) that there was the intent of omission of information. Therefore, the more information required that was withheld, the less it was needed to establish intent.
How do Courts Determine these Cases
The Courts perform a factual analysis and conclude if there was the withholding of information and if that information was required for a patenting officer. The Courts then debate about if the information that was withheld had been disclosed instead, would the PTO granted a patent in the first place. Then they must also deliberate about the consequences of applying the doctrine of inequitable conduct in this case. They must identify the consequences the patent owner and see if there would be any untoward and potentially hazardous consequences. They must identify how the patent owner will be affected if the patent they own is invalidated and all patents that are related to it to suffer the same fate.
The proving of intent to withhold material information is usually determined by circumstantial evidence in court.
Applicability in India
In India, the Indian Patents Act, 1970 has a provision regarding this matter. In sec. 8 it is given that any Indian applicant for a patent needs to disclose any and all information of any similar patents in foreign countries. This is done in order to minimize the chance of prosecution of the Indian applicant by the original foreign applicant.
The Comptroller is authorised to deal with these suits.
Conclusion
The patent application is a tough process. It has to be scrutinized and dealt with in a sensitive manner and therefore it can take a lot of time. As usual in these processes, mistakes can happen and therefore the PTO and its officers try its best to minimize these mistakes. For that to be done, the process must be clean, honest and transparent, both from the applicant and the patent officer’s side.
There is a mutual trust established between the applicant and the patent officer when an application is filed and the patent officer expects full honesty and full disclosure of relevant and required information of the patent. Failing to do so would attract a heavy punishment of having your hard obtained patent be made unenforceable, thus rendering you incapable of using your right to sue based on your patent.
Therefore in this process it is required to fully disclose any and all information that is relevant and required for the patent under all circumstances.
References:
[1] Google.com. 2020. Candour – Google Search. [online] Available at: <https://www.google.com/search?channel=trow2&client=firefox-b-d&q=candour>
[2] Sehgal, D., 2020. [online] Available at: <https://blog.ipleaders.in/doctrine-inequitable-conduct-patent-unenforceability/#What_is_the_Doctrine_of_Inequitable_Conduct>
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