The Federal Circuit is exceptionally reluctant to find inequitable conduct, especially in non-substantive matters. In particular here, compliance with the standard PTO procedure for delayed payment, using the standard PTO form, does not provide clear and convincing evidence of withholding of material information with the intent to deceive.
Background / Facts: The patent at issue here is owned by the United States government through its Naval Research Laboratory (NRL). The NRL permitted the patent to lapse for nonpayment of the 7.5-year maintenance fee. Two weeks after the lapse became effective, however, the NRL received an inquiry about licensing the patent. The NRL then petitioned the PTO to accept delayed payment of the fee using the PTO’s standard form, which was pre-populated with the statement that “[t]he delay in payment of the maintenance fee to this patent was unintentional.” The PTO granted the petition and the patent was duly licensed.
Issue(s): Whether the patent should be held permanently unenforceable on the ground that the NRL patent attorney engaged in inequitable conduct by falsely representing to the PTO that the NRL’s non-payment of the maintenance fee was “unintentional.”
Holding(s): No. The court found that the NRL attorney’s “compliance with the standard PTO procedure for delayed payment, using the PTO form for delayed payment, does not provide clear and convincing evidence of withholding of material information with the intent to deceive the Director.” The court reasoned that the PTO’s standard form “does not require a statement of the reasons for the initial non-payment and for the changed position,” and the attorney did not set forth any such details that could be classified as misleading. Perhaps most tellingly though, the court emphasized its reluctance with respect to involving itself in “matters unrelated to the substantive criteria of patentability,” and in particular its “unwillingness to extinguish the statutory presumption of validity where the patentee’s conduct did not affect the issuance of the patent.”