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A. Materiality
1. The Standard
The former standard of materiality for patent applications was whether "there is a substantial likelihood that a reasonable examiner would have considered the information important in deciding whether to allow the application to issue as a patent." Molins PLC, 48 F.3d at 1179 & n.8 (citing the then current PTO regulation). In 1992, the PTO amended the regulation governing materiality to provide:
"information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability."
37 C.F.R. § 1.56(b) ("PTO Rule 56(b)"). The amended rule has not yet been fully clarified. See Molins PLC, 48 F.3d at 1179 n.8; Donald S. Chisum, Patents § 11.03[4][v] (1996).
The PTO suggests that, under the new standard, an applicant must disclose the existence of litigation, and any material information arising from that litigation, which is related to the subject matter of the patent application. See Manual of Patent Examining Procedure ("MPEP") § 2001.06(c) (6th ed. 1995, rev. July, 1996).
More generally, "any assertion that is made by a litigant . . . during litigation, which is contradictory to the assertions made . . . to the patent examiner, comprises material information . . . ." Golden Valley Microwave Foods, Inc. v. Weaver Popcorn Co., 837 F. Supp. 1444, 1477 (N.D. Ind. 1992), aff'd, 11 F.3d 1072 (Fed. Cir. 1993), cert. denied, 511 U.S. 1128 (1994).
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The PTO will not put a "hold" on a patent application just because a suit has been filed challenging some aspect of the application, or charging the applicant with infringement. That would be crazy. |
