Don't Cite Prior Art In The Specification.

Danger Will Robinson!

Last week the Federal Circuit affirmed a decision of the US District Court for the Southern District of Florida, holding that US Patent 6,767,556, assigned to Apotex, is unenforceable due to inequitable conduct on the part of the inventor. 

In its decision the Federal Circuit enumerated the inventor's sins, to determine materiality and intent to deceive.  In evaluating the "materiality" prong of the test, the court noted that "The ’556 patent’s specification, written by Dr. Sherman, omits important details regarding the prior art that were determined to have been known to him." (slip op at 13)

OK, at this point I was thinking: wait a second - you're not required to discuss the prior art in your US patent application (unlike, say, in Europe, but that's for a different post).  How is omitting known details about the prior art in your patent specification inequitable conduct?

The answer is, it isn't - if you can resist the temptation to discuss the prior art in the first place.  HOWEVER, once you start discussing the prior art, you'd better be extra-careful.  

To be clear, we agree with Apotex that Dr. Sherman had no duty to disclose his own suspicions or beliefs regarding the prior art. There is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art. The misconduct at issue, however, goes beyond failing to disclose a personal belief or alternative interpretations of the prior art; here, Dr. Sherman affirmatively and knowingly misrepresented material facts regarding the prior art. 

(slip op at 14; cites omitted).  The clear take-home lesson from this is that if you don't discuss the prior art in your specification, you don't have to worry about being accused later of selectively omitting details that are helpful to your case.  And since citing prior art in the specification (perversely) doesn't "count" as disclosure (in the same way that citing the art in an IDS does count), why do it at all?