The Ethical Ramifications of Therasense
The Catholic University of America
Columbus School of Law
At the National Press Club
September 27, 2010
5:00 pm – 6:30 pm
A patent is an exclusive right conferred by the United States government to promote the progress of science and the useful arts. When that right is procured through fraud, the patent may be held unenforceable. An applicant has a duty to disclose to the Patent Office “all information known to be material to patentability,” per 37 CFR 1.56 (“Rule 56”). Intentional failure to do so can result in the patent being held unenforceable for inequitable conduct. What does this mean? Must parties disclose hundreds of prior art references or risk a finding of inequitable conduct rendering the patent unenforceable? What does it mean to intentionally fail to disclose all material information? Is the defense of inequitable conduct being abused in litigation, as parties seek to render unenforceable the patent they are accused of infringing?
The Court of Appeals for the Federal Circuit recently decided that the law governing a finding of inequitable conduct warranted en banc consideration, and on November 9, 2010, the full court will hear Therasense, Inc. v. Becton, Dickinson & Co. Please join us on September 27, 2010 for a discussion anticipating the ethical ramifications of this important case. We look forward to a lively discussion of the use of the inequitable conduct defense at the trial court level, the ethical considerations of the applicant’s duty of disclosure, what materiality means, how intent and materiality factor into the unenforceable determination and whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.
Professor Megan LaBelle, Catholic University
Professor Elizabeth Winston, Catholic University
Professor Lisa Dolak, Syracuse University College of Law
James J. Kulbaski, Oblon Spivak McClelland Maier and Neustadt
C. Edward Polk, Foley & Lardner LLP