Federal Circuit Holds That Prior Art is “But-For” Material
{3:10 minutes to read} Last year, the Federal Register Notice published a proposed revision by the US Patent and Trademark Office (USPTO). This proposal suggested a change to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings. In the Federal Register Notice, the USPTO further adopted the “but-for” materiality standard that the Federal Circuit reached in the Therasense case.
In Therasense, the Federal Circuit addressed the standard establishing inequitable conduct—including the intent to deceive—and the materiality of the withheld or misrepresented information. The Court held that when an applicant fails to disclose prior art to the USPTO, that prior art is but-for material. Basically, this means that the USPTO would not have allowed a claim—had it been aware of the undisclosed prior art.
Moreover, the Federal Circuit held that in making the patentability determination, the Court should apply the preponderance of the evidence standard and give the claims their “broadest reasonable construction.”
The USPTO proposed to revise rules regarding filing of the Information Disclosure Statement in order to harmonize them with the Therasense decision.
According to the proposed rule published in the Official Gazette, a unitary materiality standard is simpler for the patent system as a whole.
Under the single but-for standard of materiality, patent applicants will not be put in the position of having to meet one standard of materiality as set forth in Therasense in defending against inequitable conduct allegations in courts and a second, different materiality standard, when complying with the duty of disclosure before the USPTO. Also, the USPTO expects that by adopting the Therasense but-for standard for materiality in this currently proposed rule, the frequency with which charges of inequitable conduct are raised against applicants and practitioners for failing to disclosure material information to the Office will be reduced.
Similarly, the USPTO expects that adopting the but-for materiality standard would reduce the incentive to submit marginally relevant and cumulative information. Information that is merely cumulative to information already on the record would not be material under the but-for standard information in information disclosure statements. As such, this currently proposed rule would further the USPTO’s goal of enhancing patent quality.
What will happen next? The adoption of the but-for standard for materiality should lead to more focused prior art submissions by applicants, which in turn will assist examiners in more readily recognizing the most relevant prior art. At the same time, the USPTO also expects this currently proposed rule would continue to encourage applicants to comply with their duty of candor and good faith.
Please contact me to discuss Therasense or with questions or comments regarding this announcement.
Silvia Salvadori, PhD
(212) 897-1938