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How to Prevent a Finding of Inequitable Conduct: Improving your patent practice with the use of a checklist






By Debra Z. Anderson, Esq. of Meyer Unkovic & Scott LLP

Debra Zuckerman Anderson is an intellectual property attorney at Meyer Unkovic & Scott LLP, (412)456-2818, dza@muslaw.com.

A recent Federal Circuit decision, Aventis Pharma S.A. v. Amphastar Pharmaceuticals, Inc. (decided May 14, 2008) emphasizes the need for heightened vigilance required by attorneys and inventors in their efforts to be candid with the patent office.

In Aventis, the patent applicant submitted comparative data showing that the claimed heparin compounds had an unexpectedly improved half-life in patients as compared to prior art heparins, in order to overcome an obviousness rejection. The patent ultimately issued, but during litigation it was revealed that the applicant failed to disclose that the comparative data was obtained using different dosages, an omission that was found to be material to obtaining the patent. It was Aventisís position (and the dissentís) that any such failure was inadvertent, and not intentional. The Court of Appeals for the Federal Circuit disagreed and held the patent unenforceable. An intent to deceive the patent office was inferred from the applicantís behavior, because no credible reason for comparing half-lives at different doses had been offered.

To hold a patent unenforceable for inequitable conduct, a court must find by clear and convincing evidence that a patent applicant failed to disclos...

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