Inequitable conduct

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In United States patent law, patent holders must go to the federal courts to enforce their patent rights. Even if the patent is valid and infringed, these courts may exercise their equitable discretion not to enforce the patent if the patentee has engaged in inequitable conduct. The patent applicant has a duty of candor and good faith to the US Patent and Trademark Office when applying for their patent. Breach of this duty constitutes inequitable conduct, which includes the following: (a) failure to submit material prior art known by the applicant; (b) failure to explain references in a foreign language or submit pre-existing full or partial translations of the references; (c) misstatements of fact, including misstatements in affidavits concerning patentability; and (d) mis-description of inventorship.

The party asking the court to decline to enforce the patent, usually the alleged infringer, bears the burden of proving inequitable conduct to the court. This party must show by clear and convincing evidence that the patentee intentionally withheld or misrepresented material information.^{[citation needed]} Proven inequitable conduct in any claim can lead the entire patent to be unenforceable.

The law regarding Inequitable Conduct is currently evolving (see McKesson Information Solutions, Inc. v. Bridge Medical, Inc (2007)) at http://www.fedcir.gov/opinions/06-1517.pdf.