Clarifying the Doctrine of Inequitable Conduct

Authors

Elizabeth I. Winston, The Catholic University of America, Columbus School of LawFollow

Document Type

Article

Publication Date

2011

Abstract

Addressing squarely the issue of the multiple standards of materiality in inequitable conduct litigation, Therasense v. Becton Dickinson raises many difficult issues that could be clarified through the lens of the analogous concept of fraud on the Trademark Office. The standards for finding fraud on the Trademark Office lack the ambiguity found in the doctrine of inequitable conduct, despite the parallel penalties of unenforceability and requirements of proof of materiality and intent. Informed by the many decisions of Judge Michel, this essay concludes that the standards for finding fraud before the Trademark Office, as set forth in In re Bose, lights the path the United States Court of Appeals for the Federal Circuit should follow in Therasense, setting workable standards for finding inequitable conduct before the United States Patent and Trademark Office.

Recommended Citation

Elizabeth I. Winston, Clarifying the Doctrine of Inequitable Conduct, 10 J. MARSHALL REV. INTELL. PROP. L. 290 (2011).