James E. Hanft and Stacey S. Kerns believe that a disturbing trend has emerged in recent inequitable conduct decisions of the Court of Appeals for the Federal Circuit. When viewed over a period of decades, the pendulum swings back and forth regarding the ease -with which a finding can be made of inequitable conduct. Twenty years ago, the Federal Circuit swung the pendulum in the conservative direction in Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., by rejecting a gross negligence standard and requiring scienter, or knowledge, of material facts or an omission of them in committing acts that can be labeled as inequitable conduct. The court decided at that time that the requisite knowledge for inequitable conduct must reach a level that reflects, a deceitful intent. In reaching this conclusion, the court found that it was not possible to counter the "I did not know" excuse with a "should have known" accountability approach when faced with a pure error, which by definition is done unintentionally. The authors believe that the trend in recent decisions suggests that the pendulum is swinging back again. The court is lowering the bar for when an inventor or attorney "should have known" of the materiality of a fact or omission of fact, resulting in more findings of inequitable conduct ostensibly without the requisite scienter. If this trend continues, "I did not know" will no longer be an excuse, and inventors and patent attorneys will need to be more diligent than ever to escape accusations of inequitable conduct or be punished years later for information that they may not have had, or not known about, at the time of prosecution.
展开▼
