Those who are not familiar with patent law should not comment on patent law as if they are experts, announcing ridiculous propositions that they don’t understand. It is silly for the many commentators and journalists out there to think that they can read a little about patent law and become conversant in the intricacies, offer opinions and suggestions and portray themselves as experts. It is one thing for a journalist on a deadline to jump in over their head, but quite another when a “scholar” from a think tank who has a grand total of zero experience with patents takes a policy position and urges Congress to do something that is not only unwise, but which is reckless and completely irresponsible. Yet, that is exactly what happened when Alex Brill of the American Enterprise Institute wrote his recent article for Forbes titled What Should Congress Do with Liars and Cheats? His solution is to make inequitable conduct rules more strict and he tells companies worried about inequitable conduct to basically grow up and be glad they don’t go to jail for lying to the Patent Office. Wow… another person who would benefit from President Lincoln’s advice: “It’s better to keep your mouth shut and be thought a fool than to open it and remove all doubt.”
Here is a little bit of Mr. Brill’s article:
Congress, engaged in an ambitious process to reform the patent system in the U.S., is contemplating changing the rules with regard to inequitable conduct. Shockingly, however, they are being asked to weaken, not strengthen, the deterrent against fraud. Opponents of current law–companies holding complex but valuable patents–claim that inequitable conduct is asserted too freely and the cost of defending themselves against false claims of lying and cheating are too great. They also claim that rendering a patent unenforceable is too severe a punishment for firms found to have deceived the PTO.
But as is the case with executives who lie to the SEC, forceful punishment is the best deterrent against fraud at the PTO. A strong deterrent is necessary to produce confidence in the entire patent system so that investors are willing to risk their capital to develop new innovations. In fact, losing protection for one’s patents may be an inadequate deterrent in many circumstances, such as when it occurs near the end of a patent’s life.
Companies that feel overly burdened by current law should take solace in the fact that the government does not throw patent holders that lie and cheat behind bars. While an orange jumpsuit may be overkill when it comes to crimes at the PTO, let’s hope Congress recognizes that there is no basis to defang the inequitable conduct defense and perhaps should consider putting some more teeth into it.
If you read Mr. Brill’s profile on the American Enterprise Institute you realize quickly how and why it is that he has little or no knowledge on patent matters. Apparently he is a former senior adviser and chief economist to the House Ways and Means Committee, served on the staff of the President’s Council of Economic Advisers, where he worked on economic and legislative policy issues, including dividend taxation, the alternative minimum tax, international tax policy, social security reform, defined benefit pension reform, and U.S. trade policy. So according to his bio he has no experience with patent law or the patent system, but that didn’t seem to deter him from showing is ignorance in patent matters, and simply not understanding the inequitable conduct matter.
You see, Mr. Brill, the reason inventors and corporations are upset about inequitable conduct is because the Federal Circuit refuses to acknowledge the Patent Office definition of the duty of candor owed by those substantively involved in the prosecution of a patent application. The Patent Office wants only information submitted to the Patent Office that would support a valid rejection. Some of the judges on the Federal Circuit think that applicants should be required to disclose everything that is interesting or potentially related in any way to an application, even if those references can be distinguished and would not justifiably be capable of use for a valid rejection. You see, Mr. Brill, the problem is the ever moving standard and the refusal of the Federal Circuit to understand that what they are doing is requiring patent applicants to bury the Patent Office with loads of unrelated references out of fear of inequitable conduct. At the same time, the Director of the Office of Enrollment and Discipline is on record as saying that attorneys who submit volumes of information are subject to investigation for a breach of ethics despite that is exactly what some of the Federal Circuit judges mandate. So patent applicants and their representatives are damned if they do and damned if they don’t. Of course you thought about this before you wrote your brilliant article, right?
Also, Mr. Brill, I am sure that you realize that the same Federal Circuit that ignores Patent Office rule 37 CFR 1.56, is also the same Federal Circuit that recently decided that the Patent Office is owed great deference and practically everything they announce and require by way or rules is procedural and MUST be allowed and followed. You see, the problem is that patent applicants are forced to follow the rules enacted by the Patent Office, but yet the Federal Circuit is not so burdened by listening to the Patent Office and following what are clearly procedural rules.
Another thing, Mr. Brill, inequitable conduct is not about lying or cheating. If a material reference is known and not disclosed there can be inequitable conduct found even without a showing of intent. The Federal Circuit decided about two decades ago that gross negligence could not lead to inequitable conduct, but that en banc ruling has largely been ignored with various panels and judges deciding that negligence can lead to inequitable conduct. Are you really suggesting that people go to jail or be found to have engaged in criminal conduct as a result of making a mistake where there is no intent? I am willing to give you the benefit of the doubt and belief you are just clueless when it comes to inequitable conduct and what can lead to inequitable conduct findings, because if you are actually suggesting that negligence lead to criminal sanctions I would have to simply conclude you have lost your marbles.
Finally, Mr. Brill, let me explain to you why inequitable conduct is believed to be a scourge to patent litigation. If inequitable conduct is found all of the claims in a patent application are determined to be unenforceable, and it is possible that in some cases the taint would contaminate related patent applications. The penalty is severe, and it is a silver bullet defense, so it gets alleged constantly even when there are no facts to support it. Although it is a fraud based defense district courts routinely allow it to be plead as a defense when there is absolutely no evidence of fraud. In every other context in the law fraud needs to be plead with specificity, but not with inequitable conduct. It is alleged as a defense and the infringer goes on a fishing expedition trying to find fraud, or more recently negligence, that could be the basis for a finding of unenforceability.
Inequitable conduct need reform, and that is the only thing I agree with Mr. Brill on. The reform that is needed must mandate that the Federal Circuit follow Rule 56, and must also mandate that inequitable conduct can be raised as a defense if and only if it can be plead with specificity. Of course, at the beginning of a litigation that would mean inequitable conduct can never be plead, which is the way it should be. If, however, during discovery evidence is uncovered defendants should be allowed to amend their Answer and raise the defense, but only if there is evidence. This is the reform that is needed, and we do not need to make it any easier or throw people in jail, not at least until we have a single, unwavering definition of what is the duty of candor. Without a concrete definition that even the Federal Circuit has to accept the target would be a moving one, which would mean any criminal prosecution would fail because the law is not certain.
Join the Discussion
13 comments so far.
breadcrumbsJune 8, 2009 12:58 pm
Normally I like to phrase my posts in question form to bring out the point, but Alan, when you state:
“I truly believe that the low percentage of IC claims that stick is because the courts are protecting the Patent Bar’s hide.”
This is useless and baseless conjecture and needs direct rebuttal.
Do you want to be taken seriously in discussing matters of law when you are so careless in the base of your arguments?
Gene QuinnJune 8, 2009 12:22 pm
I can’t believe I have to explain this to you, but a patent does not provide a monopoly, so the premise of your argument is all wrong.
I would also like you to support your claim that the patent bar as a whole believes it is acceptable to tell half truths and hide information. If you are claiming that presenting the case in the most favorable light for your client I would remind you that is required by ethical rules.
Inequitable conduct standards should definitely not be raised. Applied evenly and fairly and with certainty is what is needed. Not more arbitrary application. I can’t believe you are feeding those who know nothing by making a monopoly argument.
Gene QuinnJune 8, 2009 12:19 pm
I have to completely disagree with you. If the Federal Circuit ever follows its own precedent, or acknowledges that the latest precedent says that procedural rules are within the purview of the PTO and follows Rule 56, then we can talk about whether inequitable conduct is to strict or not strict enough. As long as the law of inequitable conduct is dependent upon the 3 judge panel you draw at the Federal Circuit all we know is that a lack of certainty in the law forces individuals and companies to make unfortunate decisions due to the unfair and arbitrary application of the law.
Alan McDonaldJune 8, 2009 09:26 am
I truly believe that the low percentage of IC claims that stick is because the courts are protecting the Patent Bar’s hide.
The bar for IC has been set too high on purpose so that very few are caught.
Also, how many patents are not litigated because in the pre-filing investigation the facts of prosecution came out?
breadcrumbsJune 8, 2009 08:10 am
As I posted on Patent Docs last week:
“I am not sure that the argument presented by Mr. Brill isn’t a little misleading. No one wants liars and cheats to go unpunished. The focus (at least from what I have seen) is on cleaning up the test for IC – stopping the conflating of the two prongs of materiality and intent. Mr. Brill does not seem to acknowledge the abuse of the IC charge tactic and further cloaks the issue in a seeming presumption of guilt.”
I am curious why you think that the patent bar wants to be able to tell half truths and hide information. Do you really think that Mr. Brill was “calling out” anyone in particular? It would rather seem that he was being sensationalistic and providing ungrounded accusations. You too, seem to have this presumption of guilt for the patent bar. Perhaps you can explain why the percentage of claims of IC that actually stick are so minimal?
Alan McDonaldJune 8, 2009 07:39 am
What is it about the Patent Bar that believes it has the right to tell half truths and hide information when obtaining a government “monopoly” and that when they are called out for it wants the law changed so they can do more of it?
If anything, the inequitable conduct standard should be raised, not lowered.
Noise above LawJune 5, 2009 08:13 pm
Obviously, Tom Potts knows nothing about patent law and should thus stay out of that area. The principle that patent attorneys have a foot in both the technical and legal worlds has been posted many times on this and other blogs. I know – I’ve posted it.
Tom, what DO you know about? I welcome your comments, but please try to aim for adding more than mere noise to the discussion rather than setting yourself up as a fool to be shot down.
Gene QuinnJune 5, 2009 11:13 am
Yes, lawyers who are not engineers and scientists should avoid math, physics or science. Patent attorneys are, of course, extremely knowledgeable in math, physics and science because we are all scientists and engineers. So you are 100% correct. Lawyers who are not patent attorneys should stay out of this area, and if they do not they are actually engaging in the unauthorized practice of law.
Tom PottsJune 5, 2009 02:19 am
So by logical extension lawyers should be made to avoid anything they know nothing about – like maths physics or science: ie they should not get involved in patenting?
adele paceJune 4, 2009 09:01 pm
Misrepresentation of a material fact and an intention to deceive, both elements which need to be proven by clear and compelling evidence, requiring specificity. Despite any ambiguities as to the threshold required to prove culpability, an area which I am not familiar, the references to “lying” and “cheating” are irresponsible to say the least.
EGJune 4, 2009 12:14 pm
Great quote from LIncoln (my favorite president). And you’re absolutely correct, “Know-It-Alls That Don’t” like Brill should heed Lincoln’s advice. In particular these amateurs need to shut up and let someone who knows what’s going on (like us) do the talking. Unfortunately, too much of the general public believes this knuckleheads, but that may be changing as the general public and voters in particular are becoming much more wary and suspicious of “Washington Insiders” (former or current)/
patent leatherJune 4, 2009 11:06 am
How about this portion of the article:
“In fact, losing protection for one’s patents may be an inadequate deterrent in many circumstances, such as when it occurs near the end of a patent’s life.”
How could inequitable conduct occur near the end of a patent’s life?
Josh KJune 4, 2009 11:04 am
I read a couple of the articles written in response to Mr. Brill’s comments and my biggest concern is that he is taking a negative reinforcement approach. Patent owners should be rewarded for being innovative and therefore positive reinforcement techniques on the other end of things may better serve the American patent system.