Inequitable Conduct and Misleading Statements to USPTO

A recent opinion by Judge Posner held that a patent applicant’s failure to disclose that experts referenced in the application were paid and retained by the applicant was not a basis for finding inequitable conduct.  New Medium v. Barco N.V. (N.D. Ill. 2008).  Judge Posner went on to state that the USPTO should expect the applicant to hire and retain experts in support of their patent application, thus the failure to disclose payments to the experts was not misleading.  Id.

However, Judge Posner, did find that the applicant’s statement that “he had never met or talked with any of the experts they used”  was false based on the applicant’s prior meetings with the experts. Id.  Judge Posner also found the intent to deceive the USPTO based on the applicant’s prior dealings with the experts and the potential approval of a bid by the expert for work from the applicant.  Id.   If the applicant accepted the expert’s bid for work, the expert would have received about $200,000 from the project.  Id

Judge Posner went on to hold that the patent at issue was unenforceable.  This case raises some interesting issues to the inequitable conduct doctrine.

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