Inequitable Conduct

The American Bar Association has submitted its suggestions on reforming the inequitable conduct defense to patent infringement. Congress has at least contemplated eliminating inequitable conduct as a defense to patent infringement in the courts and making inequitable conduct an administrative proceeding in the PTO. The ABA suggests that the courts keep the inequitable conduct defense, but that the standard for proving inequitable conduct be "clear and convincing" evidence. The ABA also suggests it elements for inequitable conduct.

I would agree with the ABA on this matter because the present "scale" determination for inequitable conduct is too difficult for a court to apply. The way the elements are laid out is more familiar and easier to interpret and I think courts will be comfortable applying the standard. I also think the defense should stay in the court so the entire matter can be determined at one time.

None of this changes the fact that patent practitioners will still need to be careful to disclose all material information to the PTO, but hopefully it will decrease the number of claims of inequitable conduct.