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Duke Law Journal

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patent enforceability, misconduct, forfeiture


Intellectual Property Law | Law


Patent law doesn't look kindly on patent owners who engage in wrongdoing involving the patent. The U.S. Supreme Court and lower courts have refused to enforce patents tainted with inequitableness, fraud, or bad faith. This issue typically arises in patent litigation when an accused infringer asserts that the patent should be unenforceable if the patentee engaged in one of four proscribed activities: inequitable conduct (deliberate misrepresentations or omissions of material information from the Patent Office); patent misuse (anticompetitive licensing practices); unclean hands (business or litigation misconduct); or waiver/estoppel (a lack of candor before a standard-setting organization). This seems right--a patentee shouldn't be allowed to benefit from wrongdoing.

However, the use of unenforceability to remedy patentee misconduct is largely understudied and undertheorized in legal scholarship. One reason is doctrinal. Aside from the four proscribed activities, there is no clear-cut remedy for other types of patentee misconduct involving the asserted patent. For instance, should a patent for a nutritional supplement that makes affirmative misstatements about its safety and efficacy be enforceable? How about a patent that plagiarizes someone else's copyrighted work or makes intentionally misleading assertions about the invention's capabilities?

This Article seeks to answer these questions and fill the doctrinal and scholarly gap in patent unenforceability remedies. It offers a new, unclean-hands-based theory of unenforceability called patent forfeiture. If a patentee engages in egregious pre- or post-issuance misconduct involving the patent and gains an inequitable benefit from it or harms a third party, the patentee may forfeit the right to enforce the patent until the misconduct has been abandoned and its ill effects dissipate. Patent forfeiture adopts the hallmarks of equity -flexibility, discretion, and individualization-but is sufficiently constrained to align with other policy objectives of the patent system. And while morality, conscience, and good faith may not play a role in obtaining a patent, patent forfeiture reaffirms the importance of these equitable principles in enforcing a patent.



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