The Post-Therasense World: Pleading and Defending Against Inequitable Conduct Allegations Under the Heightened Standard for Materiality and Intent

December 7, 2011 | 9:45-10:45 a.m. PT

Once dubbed the “plague” of patent claims by the Federal Circuit, the defense of inequitable conduct was often pled and caused practitioners to submit reams of prior art to the PTO. After the Federal Circuit’s decision in Therasense, the inequitable conduct defense has become much more difficult to prove. In this session, leading practitioners examine the practical effect of Therasense and what the future of inequitable conduct will be now that Rule 56 has been discarded, the “sliding scale” is gone, and the bar has been raised for both prongs of the test for inequitable conduct:

  • Is the defense of inequitable conduct dead or merely wounded?


  • Working within the heightened standards for materiality and intent set by the Court in Therasense

    – Exploring the new “but-for” test for materiality
    – Exploring the “but-for” test for materiality: what comes next?
    – Meeting the “deliberately planned and carefully executed” exception
    – Showing the threshold level of intent
    – Determining standards for fraud and unclean hands


  • Meeting the requirements for disclosure to PTO during prosecution

    – Disclosing related prosecution and applications in the US and abroad
    – Disclosing foreign language documents
    – When is a document cumulative?
    – When is disclosure excessive– burying prior art?
    – The new PTO materiality rules

  • The proper role of inequitable conduct in litigation—How to drop the “atomic bomb” of patent law


Sponsored by:

American Conference Institute 2nd Annual Forum on Paragraph IV Disputes

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