Terminal Disclaimer Does Not Bind Two Patents For Purposes of Inequitable Conduct Unenforceability

PatentlyOImage047Pharmacia v. Par Pharmaceuticals (Fed. Cir. 2005).

Inequitable conduct includes an intent to deceive coupled with either:

  • Affirmative misrepresentation of a material fact
  • Failure to disclose material information, or
  • Submission of false material information.

In this case, the CAFC affirmed a district court’s finding of inequitable conduct based on the patentee’s failure to submit certain prior art articles to the PTO along with the filing of a declaration that contradicted the articles.  Intent was inferred by the materiality of the references and because one of the unsubmitted articles was co-authored by the declarant himself. 

Regarding a second patent in suit that was joined to the first by a terminal disclaimer, the CAFC found that the inequitable conduct during prosecution of in the first patent did not extend to the second.  Specifically, the appellate panel affirmed the conclusion that a terminal disclaimer alone does not bind two patents together for purposes of unenforceability due to inequitable conduct.

One thought on “Terminal Disclaimer Does Not Bind Two Patents For Purposes of Inequitable Conduct Unenforceability

Comments are closed.