Invalidating a us patent
To reiterate, in order to support an accusation that inequitable conduct has occurred, it is necessary to show that the patent applicant had a specific intent to deceive the USPTO during patent procurement.The district court concluded that there had been intent to deceive the USPTO, but the conclusion was inferred based on Regeneron’s misconduct during litigation.
In such a situation, the patent attorney might be required to submit that information in the second application. The withholding of other pertinent documents, such as publications, internal memos, declarations, and expert opinions may also be considered inequitable conduct Because the consequences of a finding of inequitable conduct are so severe, most patent attorneys are exceptionally diligent in disclosing to the USPTO any known documentation that may be material to the patentability of an invention.Regeneron also argued that “the district court improperly concluded that the applicant’s possessed the necessary specific intent to deceive the PTO.” First, the Federal Circuit reviewed Regeneron’s patent claims (from the asserted patent) and the content of the withheld references and concluded that the withheld references were indeed “but-for” material.Second, the Federal Circuit reviewed Regeneron’s argument that the withheld references were cumulative with prior art already before the USPTO.The least favorable option but the only option if you cannot litigate or pursue a post grant or inter-partes review is to file a preissuance submission or protest.This may be your only opportunity to prevent issuance of a patent that poses a threat to your business.However, if the application has already been published, then you must file a preissuance submission.
If the patent application has matured into a patent, then you may file a post grant review or inter-partes review at the Patent Trial and Appeal Board.
However, not all petitions for post grant review and inter-partes review are granted because the petition must have a threshold showing that there is a reasonable likelihood of success or some other raised standard of proof.
You cannot frivolously file a petition for a post grant review or inter-partes review and drag the patent owner to defend the patent.
At first glance, preissuance submissions and protests may appear to be a good option.
After all, if you can prevent issuance of a patent, then why not.
To rebut the presumption during litigation, you must bring new evidence which shows the patent is invalid under a clear and convincing evidentiary standard. To take advantage of the preissuance submissions or protests, the recommendation would be to to submit your best evidence with the expectation that its effect would be greatly diminished during litigation.